Whenever an application for registration of a trade mark is accepted, the application is advertised in the Journal.
Any person who wishes to oppose the registration of the trade mark can do so within 3 months from the date of advertisement in the Journal.
This is called an opposition – an objection to the registration of a trade mark application in the form it was advertised.
Before formally filing a Notice of Opposition, we recommend that any potential opponents first contact the trade mark applicant directly about their concerns. This may allow some matters to be resolved without need for a hearing, and the 3-month opposition period provides ample time for this exchange to occur.
If the parties are unable to settle the matter between them, the opponent may formally file a Notice of Opposition proceeding with the IPONZ Hearings Office.
The Notice of Opposition must be filed before the end of the 3-month opposition period for the trade mark application, and should include payment of the corresponding fee.
Once a Notice of Opposition has been filed, the trade mark applicant then has 2 months to file a counter-statement, or to abandon their trade mark application. If the applicant doesn't file a counter-statement within the required 2 months, the application will be deemed abandoned.
Each party may then file evidence in support of their respective positions. This evidence must be filed within a given amount of time:
- Within 2 months, the opponent may file evidence in reply to a counter-statement (or advise they do not intend to file evidence).
- Within 2 months, the trade mark applicant may then respond to the opponent's evidence.
- Within 1 month, the opponent may then file evidence strictly in reply to the applicant's evidence.
Parties will not have further opportunities to file evidence except in limited circumstances under the Trade Mark Regulations 2003.
Either party may apply for an extension of time. Such applications are subject to some limitations. The party requesting the extension of time must provide grounds for the extension of time that convince the Office that ‘genuine and exceptional’ circumstances exist that justify the extension of time being granted.
Parties may withdraw from the opposition proceedings at any time. Note that at various points within the process, a failure to meet time limits may result in the opposition being ruled abandoned or discontinued.
If a party withdraws without making any prior arrangements regarding costs, costs may be awarded against them.
Once all evidence is filed and the case is ready to be decided by the Commissioner, the parties will be contacted to ask how they want a decision to be made. The parties may elect:
- for a decision on the basis of the pleadings and evidence as filed, with no written or oral submissions from the parties, or
- for a decision on the basis of an exchange of written submissions, in accordance with a timetable agreed in advance with the Hearings Office, or
- to attend a hearing in person and make oral submissions.
Parties who elect to submit written submissions, or to attend a formal hearing, will be required to pay a Hearing Fee at the time they state their wish to make submissions or be heard.
An Assistant Commissioner then considers the case and issues a written decision, including any order as to payment of costs. For more information see our practice guidelines on Cost awards in proceedings before the Commissioner.
Either party may appeal the Commissioner’s decision, within 20 working days after the date of the decision. The appeal must be made to the High Court.
For more detailed information relating to oppositions to the registration of a trade mark, including documentation requirements and legislative references, please visit our Opposition to registration of a trade mark page.