Document Actions
4.3 Entry, alteration or removal of a memorandum
Note: This is the print view with all the Document pages on one page. The paginated version is available here, if you prefer that.
4.3.1 Notice of intention to reject entry of memorandum
Section 176 of the Act states:
The Commissioner must not exercise any of the Commissioner’s discretionary or other powers under this Act or any regulations made under this Act adversely to any person without (if required to do so within the prescribed time) giving the person an opportunity of being heard.
In light of section 176 of the Act, where the Commissioner proposes to reject the entry, alteration or removal of a memorandum on the register, the applicant will be sent a Notice of Intention to Reject Entry, Alteration or Removal of Memorandum, advising that the application will be rejected and giving the applicant an opportunity to be heard. The Notice will state the grounds on which the Commissioner proposes to reject the application.
A time limit will be stipulated, being not less than one month from the date of the Notice, in which the applicant must indicate that it wishes to be heard before the Commissioner exercises his power to reject the application. The applicant will be advised that the application will be rejected at the end of that period if the applicant has not required a hearing.
4.3.2 Applicant responds to the notice
Following receipt of the Notice, the applicant may avail themselves of the opportunity to be heard. Where the applicant requests a hearing, the request:
- Must be made in writing;
- Must indicate whether the applicant desires a hearing in person or a hearing based on written submissions; and
- Must be received by IPONZ on or prior to the expiry of the deadline specified in the Notice, taking into account any extensions of time that have been granted.
Upon receipt of the request for a hearing, the application will be forwarded to the Hearings Office.
Where the applicant requests a hearing in person, a hearing will be held before an Assistant Commissioner. Where the applicant requests a hearing based on written submissions, the applicant will be asked to forward its written submissions and an Assistant Commissioner will then consider those written submissions.
After the hearing, or after considering the applicant’s written submissions, the Assistant Commissioner will either accept or reject the application. A response will issue in writing, stating the reasons for the Assistant Commissioner’s decision and, where relevant, the materials used in arriving at the decision.
4.3.3 No response to the notice
Where IPONZ does not receive a response to the Notice on or prior to the expiry of the deadline specified in that Notice, the application will be rejected.
An Assistant Commissioner will write to the applicant confirming that the application has been rejected for the reasons given in the Notice.
Where there are any new or additional reasons for the Commissioner’s decision, or where any new or additional materials have been used in arriving at that decision, these will be stated.
4.3.4 Extensions of the deadline set in a notice
An applicant may request an extension of the time limit set in a Notice. Extensions of time will only be granted in those cases where genuine and exceptional reasons exist.9 A request for an extension of a time limit:
- Must be in writing;
- Must be received by IPONZ on or prior to the expiry of the deadline to which the extension of time request relates; and
- Must include reasons for the request.
On receipt of an application for an extension of time, the Commissioner will consider the request.
The onus is on the applicant to provide sufficient detail in its request for an extension of time to demonstrate the existence of genuine and exceptional reasons. Each extension of time request will be assessed on the basis of the information the applicant has provided in support of its request. Where the information provided by the applicant does not demonstrate the existence of genuine and exceptional reasons, the request will be declined.
The failure of an applicant to instruct its agent in a timely manner on how to proceed will not generally be considered an exceptional reason.
The comment “such additional further reasons/information as the Commissioner may request” (or similar) should not be included in a request for an extension of time. The onus is on the applicant to provide sufficient information in support of its request at the time that the request for an extension of time is made.
Where an applicant is applying for an extension of the deadline set in a Notice, the applicant should provide detailed information, such as a chronology of events, to explain why it has not been able, despite its best efforts, to request a hearing within the deadline set in the Notice.
Footnotes
9 See regulation 32 of the Trade Marks Regulations 2003.
4.3.5 Procedure where the extension is likely to be declined
Where it seems likely that the Commissioner will decline a request for an extension of time, section 176 of the Act requires that the Commissioner must first give the applicant an opportunity to be heard on the matter.
IPONZ will write to the applicant, explaining why the request seems likely to be declined, and giving the applicant 10 working days in which to request a hearing10 before the Commissioner exercises his power to decline the extension of time request.
An extension of 10 working days will be granted to the deadline set in the Notice of Intention to Reject. This period equates to the stipulated period in which the applicant may request a hearing on the proposal to decline the extension request.
Where the applicant does request a hearing on the proposal to decline the extension of time or respond to the Notice of Intention to Reject Entry, Alteration or Removal of Memorandum on or prior to the expiry of the stipulated period, a further letter will issue that officially declines the extension of time request and rejects the entry, alteration or removal of the memorandum.
Footnotes
10 See section 208(3)(a) of the Trade Marks Act 2002.
