6.3 Cancellation by a third party

An application for the cancellation of the registration of a licensee of a trade mark may be made by a third party on any of the following grounds:

• That the licensee has used the trade mark in a way that:
  • Is not the permitted use; or
  • Deceives or confuses; or
  • Is likely to deceive or confuse; or
• That the owner or the licensee misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances have materially changed since the date of the registration; or
• That the registration should not have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which the applicant is interested.

An application for the cancellation of the registration of a licensee of a trade mark by a third party must contain the following information:³⁷

• The licensee’s name;
• If the licensee has an agent, the agent’s name;
• The trade mark for which the licensee is registered;
• The application or registration number of the trade mark;
• The grounds for cancellation.

Where a person who is not the owner applies to cancel the registration of a licensee, IPONZ will notify the owner of the application as soon as practicable. The owner of the trade mark must then notify the licensee of the application as soon as practicable.³⁸

Footnotes

³⁷ See regulation 152 of the Trade Marks Regulations 2003.