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4. Rectification by the owner of a trade mark
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4.1 Commissioner to decide application for rectification
Where an application for rectification is made by the owner of the registered trade mark the Commissioner will determine whether or not there is an error or omission in the register. This determination will be based on the following information:
- The information supplied by the applicant for rectification, including the grounds for rectification and any supporting evidence; and
- Any relevant information sourced from IPONZ records and the register.
The Commissioner will investigate the application thoroughly. Where the application for rectification lacks the required information or is unclear, IPONZ will write to the relevant person asking for further documentation or further clarification on an issue prior to a decision being made.
4.2 Notice of proposal to reject rectification
In light of section 176 of the Act, where the Commissioner proposes to reject an application for rectification by the owner of a registered trade mark, the applicant will be sent a Notice of Proposal to Reject Rectification allowing the applicant the opportunity to be heard. The applicant will be advised that the Commissioner proposes to reject the application for rectification stating the grounds on which the Commissioner proposes to do so.
A time limit will be stipulated, being not less than one month from the date of the Notice of Proposal to Reject Rectification, in which the applicant must indicate that it wishes to be heard before the Commissioner exercises his power to reject the rectification application.
4.3 Applicant's response to the notice
Following receipt of the Notice of Proposal to Reject Rectification, the applicant may avail itself of the opportunity to be heard.
Where the applicant requests a hearing that 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 of Proposal to Reject Rectification, 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 reject the application for rectification or order the registration to be rectified. A decision will issue in writing, stating the reasons for the Assistant Commissioner’s decision.
4.4 No response to the notice
Where IPONZ does not receive a response to the Notice of Proposal to Reject Rectification on or prior to the expiry of the deadline specified in that Notice, taking into account any extensions of time that have been granted, the rectification will be declined.
An Assistant Commissioner will write to the applicant confirming that the application for rectification has been declined for the reasons given in the Notice of Proposal to Reject Rectification.
4.5 Extensions of the deadline in the notice
An applicant may request an extension of the time limit set in a Notice of Proposal to Reject Rectification. Extensions of time will only be granted in those cases where genuine and exceptional reasons exist.19 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.
Footnotes
19 Regulation 32 of the Trade Marks Regulations 2003.
4.6 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 hearing20 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 Proposal to Reject Rectification. 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 Rectification 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 of the memorandum.
Footnotes
20 Regulation 123(3) of the Trade Marks Regulations 2003.
