Examination

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Examination

We examine all trade mark applications to make sure these comply with all the requirements of the Trade Marks Act 2002 (“the Act”). As well as ensuring that an application meets the legal filing requirements, the Commissioner must be satisfied that there are no other grounds that would prevent registration of the trade mark.

The video opens on a title card showing the Intellectual Property Office of New Zealand logo. This fades to another screen showing the words “What happens after submitting my trade mark application?”.

We see a man standing in an office space, wearing a hat and jacket. He talks directly to the camera. “So you've submitted your application for a trade mark. Now what?” The title “Examination” appears on screen as he continues speaking. “It’s time for an examiner to take a look. They’ll check your application and make sure it’s in line with the Trade Marks Act 2002 and the Trade Marks Regulations 2003. Basically, it needs to tick all the legal boxes.”

We see close up footage of some other peoples faces, and then the computer they’re both looking at where they are designing a communications device.  “The checks include making sure it doesn’t overlap with an existing trade mark, it’s distinctive for the goods or services you want to use it for, the owner is a legal entity, and that the trade mark is an offensive.”

The title “Time frames” appears on screen as he continues speaking. “Usually, you'll hear back within 15 working days, but it could be longer if your trade mark has Māori words or imagery. In that case, the Māori Trade Marks Advisory Committee will advise your examiner if your application could be considered offensive or contrary to Māori values.”

The title “Notice of Acceptance or Compliance report” appears on screen as he continues speaking. We see examples of both types of correspondence on screen. “After your application has been examined, you'll either get a notice of acceptance saying it meets the legal requirements or a compliance report that will include the reasons why your application has been declined.”

We see him speaking to camera again, then an example email notifying of a compliance report “If you get a compliance report, it will also explain the steps you can take to adjust your application, and how to get your application re-examined. For more info on this, check out our video on how to respond to a compliance report.”

We see him speaking to camera again. “If your response overcomes the objections, you'll actually get a notice of acceptance. Woo-hoo! If there's still an issue, you'll get another compliance report and another opportunity to respond. Unfortunately, sometimes your application may have issues that cannot be resolved, and your application will have to be withdrawn or rejected. Please note that acceptance isn't the same as registration. There's still a few steps to go.”

The title “Advertisement of acceptance” appears on screen as he continues speaking. We see the search interface for the IPONZ online Journal. “Once your application is accepted, it will be published by IPONZ in the journal and advertised for three months. This gives everyone an opportunity to oppose your trade mark should they feel it infringes on their own.”

We see him speaking to camera again. “We also need to wait for6 months to elapse from your date of application, just in case an application with an earlier priority date is received from another country. Don't stress! Oppositions and priority dates issues are unlikely, and the vast majority of accepted applications proceed to registration.”

The title “Registration” appears on screen as he continues speaking. We see a person using a laptop to view their trade mark certificate of registration. “So after all that's done, your trade mark will officially become registered. We'll send you a notice of registration, and you can access your certificate of registration through our website.”

The image cuts to an end title screen showing the Intellectual Property Office of New Zealand and Digital Boost logos. The text on screen lists the IPONZ contact phone numbers, “Freephone within New Zealand 0508 447 669, Freephone from Australia 1800 796 338, International callers +64 3 962 2607”. The man continues speaking “Still have questions? The Intellectual Property Office of New Zealand is open between 8:30 AM and 5:00 PM Monday to Friday.”

The text changes to show the website address of the contact us page on the IPONZ website with the words “For less urgent matters iponz.govt.nz/contact-us We’ll be in touch within 7 working days” and the man continues speaking “For less urgent matters, you can head to the Contact Us page on the IPONZ's website. We should be in touch within seven working days. The Contact Us page also has a Common Query section. So be sure to check this out in case it addresses your question or concern.”

The video finishes by showing the logo of the Ministry of Business, Innovation and Employment, and the logo of the New Zealand Government.

This information is a general introduction to the examination step in the trade mark registration process. For more detailed information, please see our practice guideline on trade mark examinations:

Examination of trade mark applications

Deferred examination

In some cases, we may ask you to resolve some issues with your application before we proceed with a full examination. This may occur if, for example:

  • Your application is missing one or more legal requirements. For example, your mark includes foreign characters and you have not provided a transliteration.
  • You have applied to register a series of trade marks, but the marks in your application do not meet the legal requirements for a series.
  • Your application does not contain clear information. For example, the image containing your mark is not sufficiently clear, or the full name of the applicant has not been provided.

If we are not able to conduct a full examination until you have resolved one or more issues, we will send you a compliance report outlining these issues and give you an opportunity to respond within a set timeframe. We will defer a full examination of your application until these issues are resolved.

Grounds of refusal

Your examiner may identify issues with your application based on a number of grounds, including the following:

Absolute grounds

These grounds concern the nature of the mark itself, including its ability to distinguish your goods or services from those of other traders. For example, we may object if:

  • your mark is likely to deceive or confuse
  • your mark merely describes the goods and services for which it will be used, eg SWEET on ice cream, BLUFF on oysters, or BEST IN THE WORLD on banking services
  • your mark is likely to offend a significant section of the community, including Māori.

For more detailed information on how we examine trade mark applications under absolute grounds, please see our practice guidelines below.

Relative grounds

These grounds are concerned with conflict between the trade mark application and the rights of other persons, entities or traders. For example, we may object if:

  • your mark is the same as the mark in another trader’s application or registration that has earlier priority, for the same or similar goods or services
  • your mark is similar to the mark in another trader’s application or registration that has earlier priority, for the same or similar goods or services; and use of your mark may result in confusion or deception.

The other application or registration may have earlier priority because it is either:

  • a national trade mark application that was filed in New Zealand on an earlier date, or claimed an earlier priority date under the Paris Convention
  • an international trade mark application that designated New Zealand on an earlier date, or claimed an earlier priority date under the Paris Convention.

For more detailed information on how we examine trade mark applications under relative grounds, please see our practice guidelines below.

Trade Marks that contain Māori elements

If the mark in your trade mark application contains Māori elements, including Māori words or imagery, we will refer your application to the Māori Trade Marks Advisory Committee (MTAC) for their advice.

The MTAC will review your application and advise us about whether your mark is likely to offend Māori. The examiner will consider the MTAC’s advice as part of the examination of your application.

If we consider the use or registration of your mark is likely to offend Māori, the examiner will raise this objection in a compliance report. You will be given an opportunity to respond to these objections.

We’ve developed an Aratohu Mātauranga checklist to help you think through potential issues if your trade mark contains Māori elements. Completing this checklist is optional, and is not required as part of a trade mark aplication.

Aratohu Mātauranga checklist [PDF, 349 KB]

For more detailed information on how we consider trade mark applications that contain Māori elements, please see our practice guideline below.

Māori advisory committee and Māori trade marks

Respond to a compliance report

If we decide your mark is not registrable under the Act, we'll send you a compliance report that sets out the issues we’ve identified.

If you disagree with any of the issues raised, or there are circumstances we’re unaware of that may help overcome any issue, we encourage you to respond with the reasons why your application should be reconsidered.

In some instances after we consider your response, we may decide that your mark is still not registrable under the Act. If this happens, you may either:

  • abandon or withdraw your application at no additional cost
  • allow your application to lapse, by not responding to the latest compliance report by its deadline
  • request a notice of rejection so that you can request a hearing so that the matter will be considered by an Assistant Commissioner.

For more information on how to respond to a compliance report, please see our Respond to compliance report page.

Respond to compliance report