2. Rectification

A person who has an interest may make an application for rectification. ¹ The owner of a registered trade mark is clearly a person who has an interest. Additionally, a person, other than the owner of a registered trade mark concerned may apply for rectification.

The extent of the “interest” required for a person to have standing to make such an application pursuant to section 76(1) of the Act has not yet been considered either by the Commissioner or the Courts in New Zealand. The standing of an applicant will be determined by the Commissioner on a case by case basis. IPONZ considers that the term “interest” is likely to be interpreted broadly.

Regulation 87(h) of the Regulations requires an application for rectification by a person other than the owner to be accompanied by a statement of the basis on which the applicant claims to be a person who has an interest, thereby enabling the Commissioner to determine if the applicant has standing.

The 1953 Act required an applicant for rectification to satisfy the Commissioner that they were a “person aggrieved”, as did the predecessor section of the UK rectification provision. A “person aggrieved” is a higher standard than that of a person having an ‘interest”. New Zealand decisions of the IPONZ Hearings Office interpreted the wording “person aggrieved” liberally.

Brown and Grant, The Law of Intellectual Property in New Zealand at 92 states that:

Similarly, the wording “person aggrieved” was interpreted in the United Kingdom broadly, namely that “the effect of the requirement was therefore to exclude only busybodies or persons with only a fanciful interest”.²

Section 64 of the UK Act states that an applicant for rectification must have a “sufficient interest”. This is arguably narrower than the “interest” that is required in New Zealand, rendering the relevant test in New Zealand at a lower threshold.

The UK Trade Marks Office consider that the “sufficient interest” may have to be established where the applicant has no obvious interest, beneficial, registered or otherwise. What constitutes a “sufficient interest” has been considered in the context of section 64 of the UK Act. The standing of the following applicants has not been questioned:

• The owner of the registered trade mark;
• The owner of similar trade marks on the register where there was doubt as to whether the registered mark was the correct mark;³
• An applicant claiming to be the correct and true owner of the registered trade mark;⁴ or
• A previous owner of the registered trade mark concerned, that believed they should still be the owner of the registered trade mark.⁵

Other examples of persons that IPONZ considers to have an “interest” include:

• A licensee of the registration;⁶
• Any party that has given consent to the registration;
• A party named in a memorandum; or
• Anyone alleged to infringe a mark would be a person with an interest in its registration.⁷

Footnotes

¹ Section 76(1) of the Trade Marks Act 2002.

² Kerly’s Law of Trade Marks and Trade Names, 13th edition, Sweet & Maxwell, London, p. 51.

³ Red & cream coloured block device, BL (SRIS) O-246-02, 18 June 2002.

⁴ Bendy Toy’s Lt’s Application, BL O-336-01, 3 August 2001 (UK).

⁵ WALKERLAND, BL O-283-02, 19 July 2002 (UK).

⁶ Kerly’s Law of Trade Marks and Trade Names, 13th edition, Sweet & Maxwell, London, p. 51 states that a “registrable transaction” has a sufficient interest.

⁷ Kerly’s Law of Trade Marks and Trade Names, 13th edition, Sweet & Maxwell, London, p. 51.

An application for rectification may only be made in respect of an error or omission in the register.⁸ There is currently no case law in New Zealand which specifically deals with what is an “error or omission in the register” in the context of section 76(1) of the Act.

This provision is intended to cover applications for rectification where genuine mistakes and errors in the register exist. Section 76 of the Act is not an amendment section; cases where the applicant for rectification is essentially requesting an amendment to a registered mark, are therefore not covered by this section.

It is clear that clerical errors and mistakes in the register are able to be rectified unless they affect the validity of the trade mark registration. Additionally, subsection 76(2) of the Act states that an application for rectification of the register may be made either to the Commissioner or to the Court. This suggests that rectification applications may be concerned with matters of weight and difficulty.⁹

Therefore, more substantive questions like the determination of ownership of a mark may also be covered, but only if another, purpose-made, section of the Act does not cover the relief being sought. For example, in the United Kingdom Patent Office Trade Mark decision of Bendy Toy’s Lt’s Application¹⁰ , the Registrar considered that “Rectification” within the scope of the UK Act was more than a simple correction of a clerical error and went on to construe a trust and rectify the register by transferring the ownership of the trade mark registration in question.

The following are examples that IPONZ considers may amount to an error or omission in the register:

• Where an assignment action was not correct, and on the basis of evidence provided it was clear that the ownership details of the trade mark registration were incorrect in the register.¹¹ However, where a more appropriate section of the Act applies, that section is to be used;
• Errors in specifications where IPONZ and the applicant for a trade mark registration have agreed on a specification before acceptance, however the specification is then accepted, advertised and registered incorrectly, resulting in an error in the specification in the register; or
• Where terms in the specification are self-evidently erroneous.

Please note that these are examples of errors and omissions in the register and do not reflect examples of successful rectification applications as any correction of an error or omission must not affect the validity of the trade mark registration.

The following are examples that IPONZ considers are not errors or omissions in the register that can be rectified under section 76 of the Act:

• Where an applicant for rectification is claiming that the registered trade mark concerned is not the trade mark that was intended to be filed. An error by an applicant for trade mark registration which results in a wrong trade mark being filed, accepted and ultimately registered is not considered to be an error in the register. The fact that the applicant may not have intended to file that particular trade mark does not mean that there is an error in the register. The registration itself is technically valid and correct with no errors; or
• Where an application for rectification is essentially a request for an amendment. As previously stated this section does not cover a situation where the owner has changed their mind regarding some element of the registered trade mark. If there is insufficient evidence that an error exists, the application for rectification will be declined. It is well established that a “mere change of mind or opinion” does not constitute an “error”.¹²

Footnotes

⁸ Section 76(1) of the Trade Marks Act 2002.

⁹ Bendy Toy’s Lt’s Application, BL O-336-01, 3 August 2001 (UK).

¹⁰ BL O-336-01, 3 August 2001 (UK).

¹¹ WALKERLAND, BL O-283-02, 19 July 2002 (UK).

¹² Trade Mark Application Nos. 283105, 292403-5, 292887, and 293667-71, AULD MUG and device, in classes 25, 33, 42, 32 and 16 (8 April 1999) unreported, Assistant Commissioner Popplewell. Trade Mark Application No. 281910, DEWBERRY, in class 3 (1 September 1999) unreported, Assistant Commissioner Duffy. Trade Mark Application No. 280909, OASIS, in class 11 (29 October 2001) unreported, Assistant Commissioner Duffy.

An application for rectification may not be made in respect of a matter that affects the validity of the registration of the trade mark.¹³

Section 76(3) of the Act is equivalent to the proviso to rectification that is set out in section 64 of the UK Act. Section 64 of the UK Act states:

64. - (1) Any person having a sufficient interest may apply for the rectification of an error or omission in the register:

In Andreas Stihl [2001] RPC 12, the Appointed Person commented:

One of the “unwaivable statutory requirements” referred to in the Andreas Stihl decision is section 39(2) which is the UK Act equivalent of section 37(2)(b) of the Act which states:

Accordingly section 64 of the UK Act has been held to exclude rectification where the correction sought would not be allowed by section 39(2) of the UK Act. In New Zealand, therefore, an application for rectification will not be allowed where the rectification sought would contravene section 37(2) of the Act. The rectification may not “materially alter the meaning or scope of the registration”. If the proposed rectification did materially alter the meaning or scope of the registration then that would mean that an “unwaivable statutory requirement” would have been circumvented. All but the most minor amendments to a trade mark are likely to affect the meaning or scope of the registration.

The scope of the term “validity” as it appears in section 76(3) of the Act is to be interpreted quite broadly. The UK Trade Marks Office considers the following to be corrections that affect the validity of a trade mark registration:

• An alteration to the identity of the trade mark itself;
• The broadening of a specification or the addition of something new to a specification; and
• Any other matter which might otherwise be more properly dealt with under another section of the Act, or which might involve circumvention of statutory requirements.

The amendment of the ownership of a trade mark registration has been found not to affect the validity of the trade mark registrations.¹⁴

Footnotes

¹³ Section 76(3) of the Trade Marks Act 2002.

¹⁴ WALKERLAND, BL O-283-02, 19 July 2002 (UK).

Pursuant to section 76(4) of the Act, the effect of the rectification of the register is that the error or omission concerned is to be treated as if it had never existed unless the Commissioner or the Court directs otherwise.

Where an application for rectification is accepted, IPONZ will update the register and notify the applicant accordingly.