4 Examination of trade marks containing Maori signs

Where a trade mark contains a Māori sign:

• the application will initially be forwarded to the Committee;
• the applicant will be advised that the Commissioner is seeking the advice of the Committee to determine whether the mark is likely to be offensive to Māori; and
• the trade mark will be examined pursuant to the Act except for sections 17 and 18 (examination under sections 17 and 18 will occur once advice has been received from the Committee).

A Compliance Report will be issued. The Compliance Report will explain how the application does not comply with the other requirements of the Act, and the Trade Marks Regulations 2003 (“the Regulations”), if any, and explain the referral to the Committee.

Generally, no time limit will be set until a full Compliance Report is issued. However a time limit may be set where:

1. the specification is so vague so that the Committee is unlikely to be able to make an assessment as to the potential offensiveness; or
2. regulation 43 (2)(a) of the Regulations applies. That is, applicants have one month to add an extra class if the goods and services are listed in the original specification.

To ensure there are no undue delays to registration, Committee members will be required to advise the Commissioner within a set timeframe of the outcome of their “preliminary consideration”.

If individual members are confident that the registration of the trade mark will not cause offence to Māori, IPONZ will advise the applicant accordingly, and the application will then proceed through the usual process of trade mark examination.

If committee members have initial concerns, or trade marks are filed shortly before the next Committee meeting, the Committee will meet to consider the application and determine whether the trade mark is either:

• not offensive to Māori;
• not likely to be offensive to Māori;
• likely to be offensive to Māori; or
• offensive to Māori.

Alternatively, the Committee may advise that further information is required before a determination can be made. In such a case the Committee must advise the Commissioner of this, together with the nature of the further information required. The Commissioner will consider the Committee’s advice in such cases and determine whether to advise the applicant to obtain this additional information.

Once the Committee has provided advice on the trade mark, IPONZ will examine the trade mark and issue a full Compliance Report. Applicants will have 12 months from the date the full Compliance Report issues to have their application in order for acceptance.