Cancellation or Alteration
Any person who can show they are aggrieved by either:
- a registered national trade mark; or
- an International Registration protected in New Zealand (hereafter referred to as an IRPNZ),
may apply to have it cancelled or altered for the reasons set out under sections 62, 63 or 64.
If successful, the registered national trade mark or IRPNZ is cancelled or altered on the register.
For the purpose of this guidance, hereafter the term ‘trade mark registration’ is used to refer to either a national trade mark registration or IRPNZ.
Application for Cancellation or Alteration Process Overview
- Applicant files an application for cancellation or alteration;
- Within 2 months the owner files a counterstatement. If not filed, the Commissioner will determine the application on the documents filed by the applicant.
- Within 2 months, applicant files evidence in support of their position.
- Within 2 months, owner may file evidence in support of their position.
- Within 1 month, the applicant may file evidence strictly in reply to the owner’s evidence.
- Once the evidential stages are complete the Commissioner asks the parties how they wish to be heard, and confirms the hearing date and venue.
- Following the hearing, or any other way the parties elected the matter to be decided, the Commissioner issues a formal written decision.
- The Commissioner’s decision may be appealed to the High Court.
About this information
The following information is intended to guide and inform parties involved in Intellectual Property Office of New Zealand (IPONZ) hearings. It reflects the current accepted practice of IPONZ and is to be read in conjunction with the:
- Trade Marks Act 2002; and
- Trade Marks Regulations 2003; and
- Trade Marks (International Registration) Regulations 2012
Links to which are provided throughout.
Please note the process for an application for cancellation or alteration of a (1) national trade mark registration or (2) IRPNZ is largely identical. There are, however, some differences which the parties need to be aware of.
See international trade mark proceedings for more information.
Before filing an application
IPONZ recommends that a party considering filing an application for cancellation or alteration contacts the trade mark owner directly about their concerns before filing their application to see if the matter can be resolved amicably without the need for formal proceedings. Failure to try and resolve the matter amicably may have a bearing on any subsequent costs that the Commissioner awards to the successful party in the proceedings.
1. Application for cancellation or alteration
Sections 62, 63 and 64, Regulations 114 and 115, International Regulation 21
The purpose of the application for cancellation or alteration (also referred to as the applicant’s pleadings) is to outline the grounds on which the applicant alleges the trade mark registration should be cancelled or altered.
Requirements for application for cancellation or alteration
The application for cancellation or alteration must: 1
- be in writing;
- be accompanied by the prescribed fee; and
- be signed by the applicant.
The application must also contain the following information specified in regulation 115:
- the name and address for service of the applicant;
- if the applicant has an agent, the agent’s name;
- the number of the trade mark registration to which the application relates;
- the class/es, or the goods or services, to which the application relates;
- the extent to which cancellation or alteration is sought;
- the grounds for cancellation or alteration; and
- a statement of the basis on which the applicant claims to be a person aggrieved.
When filing the application through the IPONZ case management facility please take care to ensure the ‘Applicant’ and ‘Owner’ fields are correctly entered. The applicant is the party filing the application for cancellation or alteration. The owner is the party that owns the trade mark registration.
IPONZ will normally process the application for cancellation or alteration within two working days.
Where can an application for cancellation or alteration be filed?
Sections 62, 63 and 64
An aggrieved person can apply to either the Commissioner, via IPONZ, or the High Court for cancellation or alteration of the trade mark registration for a breach of condition. 2 However, where there is already another pending court action against the registered trade mark, the aggrieved person must apply to the Court. 3
For the cancellation or alteration of registration of certification or collective trade marks, the aggrieved person must apply to the Commissioner. 4
Sections 62, 63 and 64
An application for a cancellation or alteration can only be made by an 'aggrieved person'. The onus is on the person applying for the cancellation or alteration to establish they are aggrieved, as at the date they filed their application. 7
It is now settled law that the term 'aggrieved person' is to be given a liberal or wide interpretation. Such an interpretation is consistent with the public interest in maintaining the integrity of the register and section 5(1) of the Interpretation Act 1999. 8 To be aggrieved, the applicant will need show it is appreciably disadvantaged in a legal or practical sense by the owner’s trade mark. 9
The party who is applying for the cancellation or alteration must be able to show that at the relevant date they would have been appreciably disadvantaged in a legal or practical sense by the existence of the trade mark registration. 10 The Applicant should include proof of the reasons as to why they are an aggrieved person when filing their evidence during the proceeding.
Grounds for Application for Cancellation or Alteration
Sections 62, 63 and 64, Regulations 114 and 115
The application for cancellation or alteration needs to set out the grounds relied upon by the applicant, namely:
- The failure to comply with a condition entered on the register in relation to the trade mark; 11 or
- A requirement that any entry in the register that relates to a certification trade mark be cancelled or altered, or that the deposited regulations be altered, on any of the following grounds that:
(a) the owner is no longer competent to certify any goods or services in respect of which the certification trade mark is registered;
(b) the owner has not complied with the deposited regulations;
(c) that it is not in the public interest for the mark to be registered;
(d) it is in the public interest to alter the regulations; or
- Require an entry in the register that relates to a collective trade mark to be cancelled or altered on any of the following grounds that:
(a) the collective association concerned is an unlawful association under any enactment; or
(b) the collective association concerned no longer exists; or
(c) it's not in the public interest for the mark to be registered.
If the grounds and reasons are not stated clearly, the application may not be accepted by IPONZ. It may also mean that the applicant cannot present further arguments or rely on matters that were not covered in the application for cancellation or alteration as the proceeding progresses further.
Once an application for cancellation or alteration has been filed, the Commissioner will notify the trade mark owner, and provide them with a copy of the application.
The trade mark owner then has two months to file a counterstatement if it wishes to defend its trade mark registration.
The purpose of the owner’s counterstatement (also referred to as the owner’s pleadings) is to clarify which assertions in the application for cancellation or alteration the owner either accepts or denies. This process is used to determine which matters are actually in contention so the parties can focus their efforts on these contentious matters when preparing and filing their evidence, as opposed to wasting time and effort filing evidence for matters that are not in dispute.
Requirements for counterstatement
The counterstatement must be in writing and contain the following information:
- The name and address for service of the trade mark owner.
- If the owner has an agent, the agent’s name.
- A response to the applicant’s grounds for cancellation or alteration, by admitting, denying, or claiming lack of knowledge of, each assertion made in the application for cancellation or alteration.
- A brief statement of the facts on which the owner relies in support of its registration.
- Be signed by the owner.
IPONZ recommend addressing each assertion made by the applicant by reference to the corresponding paragraph number in the application for cancellation or alteration. For example, “the owner accepts that the applicant is the owner of mark No. 123456 TRADE MARK cited at paragraph 6 of the application for cancellation or alteration but denies that it is confusingly similar to its mark” or “the applicant has no knowledge of the information contained in paragraph 7”. This approach will ensure the owner has responded to all assertions in the application for cancellation or alteration.
The brief statement of facts should (briefly) outline the general facts and reasons why the owner’s mark should remain on the register.
Please note the owner should not file any evidence with its counterstatement. The owner will be given an opportunity to file its evidence later in the proceeding.
IPONZ will send a copy of the counterstatement to the applicant within 15 working days of it being filed.
Consequences of not filing a Counterstatement
If the owner does not file a counterstatement on or before the deadline as notified by IPONZ, the application for cancellation or alteration will be determined on the documents filed by the applicant only. The owner will play no further part in the proceedings.
In this situation, IPONZ will invite the applicant to file evidence in support of its application for cancellation or alteration, and to be heard before the Assistant Commissioner, so it has an opportunity to make out a prima facie case that the mark should be cancelled or altered. This is necessary to overcome the statutory presumption of validity of the registration under s 162 of the Act. 14
3. Applicant’s evidence
Regulation 118 and 119
From the date the Commissioner sends the applicant the owner’s counterstatement, the applicant has two months to either:
(a) file evidence in support of the application
(b) notify the Commissioner they do not intend to file evidence, or
(c) notify the Commissioner they wish to withdraw their application.
The applicant’s evidence must be in the form of a statutory declaration or affidavit. If evidence is not in the proper form, it will not be admitted into the proceeding.
See the evidence guidelines for further information on evidence requirements.
The applicant must, in addition to filing its evidence with IPONZ by the applicable deadline, serve a copy on the owner as soon as practicable pursuant to regulation 33. Please note that filing evidence with IPONZ through its case management facility does not constitute service on the other side.
The application for cancellation or alteration will be discontinued if the applicant fails to do (a), (b) or (c) above by the applicable deadline.
This will result in the trade mark registration remaining on the register.
4. Owner’s evidence
The owner or its licensee may file evidence in support of its trade mark registration within two months of either:
(a) being served a copy of the applicant’s evidence; or
(b) being notified of the applicant’s intention not to file evidence.
The owner or its licensee’s evidence must be in the form of a statutory declaration or affidavit. If evidence is not in the proper form, it won’t be admitted into the proceeding.
See the evidence guidelines for further information on evidence requirements.
The owner or licensee must, in addition to filing its evidence with IPONZ by the applicable deadline, serve a copy on the applicant as soon as practicable pursuant to regulation 33. Please note that filing evidence with IPONZ through its case management facility does not constitute service on the other side.
If the owner and/or licensee decide not to file evidence, this will conclude the evidential stages of the proceeding. The case will then be ready for a hearing.
5. Applicant’s evidence strictly in reply
If the owner files evidence, the applicant may file evidence strictly in reply within one month of being served with a copy. It follows that the applicant cannot file evidence strictly in reply where the owner has chosen not to file any evidence – there being nothing to reply to.
Again, the evidence must be in the form of a statutory declaration or affidavit. In addition to filing it through the IPONZ case management facility, the applicant must also serve a copy on the owner as soon as practicable pursuant to regulation 33.
Once the applicant has filed its evidence in reply, or the deadline for this has passed, the case will be ready for a hearing.
6. Extensions of time and halts
Regulations 28 and 32
At any stage in a proceeding after the application for cancellation or alteration has been filed, a party may request an extension of time to complete their task or request that the proceeding be halted while another matter is resolved or concluded, for example where the parties have entered into settlement negotiations or where there is another co-pending proceeding between the parties that needs to be determined first.
See extensions and halts for more information.
Parties may withdraw from a proceeding at any time. However, they should consider reaching an agreement with the other side as to costs before withdrawing from the proceeding (or withdrawing the trade mark registration) otherwise costs may be still be awarded against them.
See costs for more information.
Regulations 122, 125, 126 and 127
Once the evidential stages of the proceeding are complete, we will ask the parties how they wish to be heard. The parties may elect one of the following options:
- On the papers already filed (no hearing fee)
- Parties choosing this option are not required to do anything further and will be notified through the case management system when the Assistant Commissioner has decided the case.
- By filing written submissions to be considered by the Assistant Commissioner hearing the case (hearing fee required)
- Parties choosing this option will be set a task through the case management system to file their written submissions.
- Payment of the hearing fee is due at the time of filing the written submissions.
- By attendance at a hearing in person before the Assistant Commissioner(hearing fee required)
- Parties choosing this option will be notified of a hearing date no less than one month in advance.
- A task will be set to file hearing submissions by 3 working days prior to the hearing date.
- Payment of the hearing fee is due 10 working days before the hearing date.
See fees for more information
Wellington is the primary venue for hearings by appearance. However, the IPONZ Hearings Office will consider requests to hold hearings in either Christchurch or Auckland if this better suits the parties. The IPONZ Hearings Office will also consider requests for a party to appear at the hearing via a video link from another MBIE site. While the Hearings Office will attempt to accommodate such requests, it is entirely at the discretion of the IPONZ Hearings Office.
Once the parties have advised how they wish to be heard, a hearing date and venue will be set and the case file including both parties pleadings, evidence, and hearing submissions (if any) will be passed over to the Assistant Commissioner hearing the case.
9. Assistant Commissioner’s written decision
Following the hearing (either by appearance, written submissions, or on the papers filed) the Assistant Commissioner will issue a written decision, including any award of costs. The decision will normally be issued within 30 working days from the hearing.
The decision of the Assistant Commissioner will be sent to both parties via the IPONZ case management facility.
See costs for more information.
All IPONZ hearings decisions are published on the New Zealand Legal Information Institute website.
Sections 170 and 171
Parties may appeal the Assistant Commissioner’s decision within 20 working days by:
- filing a notice of appeal in the High Court; and
- notifying the Commissioner.
If no appeal is filed the decision of the Commissioner is final, and the Commissioner will alter any entry on the register accordingly to give effect to the decision.
With regard to an IRPNZ, if the registration is cancelled or altered, in whole or in part, we will notify the International Bureau of the extent that the registration has been cancelled or altered, as required by regulation 22(1) of the Trade Marks (International Registration) Regulations 2012.
- 1 Regulation 114
- 2 Section 62
- 3 Section 158(a)
- 4 Sections 63 and 64
- 5 Section 158(b)(i)
- 6 Section 158(b)(ii)
- 7 Manhaas Industries (2000) Limited v Fresha International (Import/Export) Co Limited  NZHC 1815 at  and Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 (NSWSC) at 455.
- 8 Metalman New Zealand Limited v Scrapman BOP Limited  NZIPOTM 17 (3 April 2014) at para 51; Fareed Khalaf Sons Company trading as Khalaf Stores v Phoenix Dairy Caribe NV HC Wellington CIV 2002-485-000207, 3 September 2003 at .
- 9 Ritz Hotel v Charles of the Ritz 12 IPR 417 at 455
- 10 Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 454-455
- 11 Section 62
- 12 Section 63
- 13 Section 64
- 14 Sportsgear New Zealand Limited and White Holdings Limited v Rocawear Licensing, LLC and Mitchell & Ness Nostalgia Company  NZIPOTM 13 (May 2005). See also O.T.S. S.p.A. v Guardant, Inc  NZIPOTM 5 (9 February 2009), at para 87 – in order to succeed in undefended proceedings, the applicant must establish that it is an aggrieved person under section 73(1) of the Act, and must make out a prima facie case of invalidity in order to satisfy the evidential burden in section 162 of the Act.