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Respond to compliance report

A compliance report is a formal letter written by the trade mark examiner who has assessed your application and concludes that it doesn't comply fully with the Trade Marks Act 2002 (the Act). It details the parts of your application that don't comply with the Act.

You have the opportunity to respond to any of the issues raised within 12 months from the date your application was filed. The deadline for response will be noted at the bottom of the report.

The following information explains sets out common issues that may be raised in a compliance report and how to respond. It's not a comprehensive list of all the issues that may be raised, and doesn’t give you all the options for responding. It also doesn't constrain the judgment and discretion of the Commissioner of Trade Marks, and each application will be considered on its own merits.

How to respond

If an objection is raised to a trade mark application, a compliance report is issued and a notification email is sent to the case contact’s email address notifying them of the report.

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

To view and respond to the compliance report:

  1. Log in to our case management system, and go to your Inbox.
  2. Under Tasks, the compliance report is attached to the case number with the title Respond to TM Compliance Report.
  3. Select the Respond to TM Compliance Report link to open it. The following options display:
    • Objection Response Documents
      Select Add to upload documents in response to the compliance report.
    • Request an Amendment
      This allows you to make small changes to your original trade mark application for the purpose of correction, as defined under Section 37 of the Act.
    • Change Goods and Services Specification
      This allows you to add, edit and delete elements of your Goods and Services specification.
    • Request an Extension of Time
      This allows you to request an extension of time to comply with any request. This is granted at the Commissioner’s discretion.
  4. When you submit a request for an amendment or to change goods and services specifications, choose to Complete task later or Complete task now. Make sure you’ve responded to all objections raised in your compliance report before selecting Complete task now.

Note: If you request any changes to client details on your case, you will still be required to respond to the compliance report task in your inbox.

Common issues

The following issues may be raised in a compliance report:

Some objections will mean that the full examination of the application is deferred until that objection is overcome (deferred examination).

Section 18: Non-distinctive trade mark not registrable

If an issue is raised under this section, this may be because the mark appears to be:

  • Non-distinctive (section 18(1)(b))
    A trade mark must be distinctive of a single trader’s goods or services. This means it must be unusual enough that consumers would identify it with only one trader. If a trade mark is non-distinctive it means that the public would not identify the trade mark as a ‘brand’ or ‘logo’.
    For example, the term BUDGET SUPERMARKET for retail services in relation to food and household items is unlikely to identify one particular trader from any other in that trade channel. The term could be used in connection with many different traders and it would be unfair to grant a monopoly of such a term to any one trader.
  • Descriptive (section 18(1)(c))
    Marks that simply describe the goods or services to which they relate will also often be non-distinctive under section 18.
    For example, the word APPLE cannot be registered as a trade mark for fruit. This is because APPLE is not capable of distinguishing the goods of one trader from another as it is a generic name for a particular type of fruit.
    However APPLE® is distinctive in relation to computers.
  • Customary in Trade (section 18(1)(d))
    Marks that are commonly used in relation to the goods or services for which the mark is being used may also be non-distinctive under section 18.
    For example, a colloquial or generic term that has been commonly used to describe a characteristic of the goods or services may not be registrable. The term EXTRA SUPREME is commonly used to describe a pizza with many toppings, and would not be registrable as a trade mark in relation to pizza.

For more information, see Practice guidelines 4 to 9.

Things to consider in your response

Because the Trade Marks Act 2002 restricts us from registering a trade mark that is non-distinctive, you'll need to provide us with information that demonstrates your trade mark is distinctive in relation to the goods or services applied for.

If you disagree with our assessment, or there are circumstances we’re not aware of that may help overcome this issue, we encourage you to outline these in a written response to your compliance report.

Other things to consider include:

  • If a trade mark is stylised or contains unusual material such as an image it is likely to be more distinctive than if it is in plain words.
  • Reasons why the trade mark may be able to distinguish your goods or services in the marketplace.

Evidence of use

In some situations applicants may provide formal evidence to try to overcome a section 18 objection. Evidence consists of material that shows that the general public have been exposed to the trade mark to the extent that consumers recognise the trade mark as belonging to one particular trader. The trade mark has therefore become distinctive in the marketplace in relation to the goods or services because of extensive use.

If you think this may apply to you, see Filing evidence of use.

Section 25: Registrable of identical or similar trade mark

An objection under this section means that an identical or similar trade mark has been filed with us at an earlier date than your application. These trade marks are raised as citations in the compliance report because the Act prohibits the registration of identical or similar marks that belong to different people for the same or similar goods or services. This is to prevent the public being confused or deceived as to whose goods or services they are buying.

For more information, see Practice guidelines 7 to 11.

If you disagree with our assessment, you may wish to respond to the objection via the case management facility and explain why you think consumers are unlikely to be confused or deceived between your trade mark and the mark(s) that have been cited against it.

Things to consider in your response

  • Anything that may help to demonstrate that deception or confusion is unlikely. For example, “my trade mark is pronounced differently from the cited trade mark, and these goods are usually asked for by name”.
  • Anything that may help to demonstrate that there is no overlap in the type of goods or services that will be traded in under your mark and the cited mark(s).
  • Restricting the specification of the goods or services in your application so there is no overlap between the goods or services that will be traded in under your mark and the goods and services of the cited mark(s). You may obtain consent from the owner of the cited mark(s) to the use and registration of your mark.
  • If your application is for more than one class of goods or services, you could divide the application to allow any goods and/or services or classes that the cited mark does not conflict with to be accepted.
  • You could file formal evidence demonstrating that your trade mark has co-existed in the market place and no confusion or deception has resulted. This is called filing evidence of honest concurrent use.

Contact us if you require more information regarding these options. Further information is also available in the Practice guideline 10a: Overcoming a citation.

Sections 31: Classification of trade marks, and 32: Application: how made

When you apply to register a trade mark you must include a list of all goods and/or services for which you want to use the trade mark for. This is called a specification of goods or services. In addition, you must list the class or classes into which the goods or services fall. This is referred to as the classification of your goods or services.

Specification

  • You must have an honest intention to trade in all of the goods or services.
  • Your list of goods or services must be clear so that anyone looking at the trade mark database will be able to understand the exact nature of the goods or services.
  • The specification is a legal description of the goods or services and must be clear or it may be difficult to enforce and protect your trade mark rights.

Classification

Classification is the term used to describe the system of categorising goods and services of a similar kind into classes for ease of identification and searching. New Zealand adheres to an international classification system called the Nice Classification, which is comprised of 45 classes. Of those 45 classes, classes 1 to 34 pertain to goods, while classes 35 to 45 pertain to services.

It's important that your specification is clear, and that it's classified in the correct class in the Nice Classification. See Classifying your goods and/or services for more information and/or search our Trade mark classification database.

Although issues regarding specification and classification can be difficult to understand and work through, they're often resolvable. When you receive a request to amend the specification of your goods and services you can:

  • decide to accept any amendments suggested in the report
  • re-word the specification yourself bearing in mind any points raised
  • provide more information about the nature of your goods and services so that we can determine whether or not they have been correctly specified and classified.

Your compliance report may also contain requests to amend grammar or syntax in the specification. This will often require you to agree to the amendments that the examiner has suggested, such as the addition of commas or semi-colons, or corrections of spelling errors.

When you receive a request in your compliance report to change your classification or specification, you may respond to the compliance report via the case management facility to agree to the change. If you disagree with our suggestions, or are aware of anything that may assist in the classification or specification process, provide this information when you respond to the report.

For more information about specification and classification of goods and/or services, see Practice guidelines 03: Classification and specification guide.

Section 5: Trade marks that do not constitute a series

A series trade mark application is a single application that contains more than one trade mark. To qualify as a series, the marks in the application must resemble each other in their material particulars. This means that the features of the trade mark must be essentially the same in each mark in the series. Any differences between the marks must not substantially affect the marks when each mark is compared to the others.

Series marks may include marks that vary in respect of one or more of the following:

  • statements of the goods or services
  • statements of number, price, quality or names of places
  • other matters of a non-distinctive character that do not substantially affect the identity of the trade mark
  • colour.

Below is an example of marks that would constitute a valid series application. The marks are essentially the same, and only vary in respect of the statement of goods:

ALMO THE GREAT'S

mango chutney

ALMO THE GREAT'S

tomato relish

ALMO THE GREAT'S

piccalilli

If your compliance report advises that your application does not constitute a series, you will be asked to decide which mark(s) you would like the application to proceed with and to agree to delete the remaining marks. If you still require protection for the deleted mark(s) you will need to apply for these marks in a separate application. Alternatively, if you disagree with our assessment, you may wish to respond to the objection via the case management facility and explain why you think your application constitutes a series.

For more information about series marks, see Practice guideline 13: Series marks.

Deferred examination

This is where we have not been able to conduct a full examination of the mark to ensure it complies fully with the Trade Marks Act 2002 because of an objection raised in relation to the application.

You'll need to respond to the objection raised that has obstructed a full examination from occurring. It's important to note that further compliance reports may be sent following a deferred examination, and these may raise further issues.

Note

This information is intended to be a guide only. For legal advice, we recommend you contact a patent attorney or lawyer familiar with intellectual property law.

Response checklist

Include the following information and documentation with your compliance report response:

  • trade mark application number
  • all sections that are raised have been addressed individually
  • additional documentation such as evidence of use, if required
  • additional information such as applicant and address details or colour limitations, translations or transliterations, if required.

We encourage you to respond to the compliance report via the case management facility so we can consider whether your response overcomes the objection(s).

If your response:

  • resolves all the issues, then your application will be accepted for registration
  • doesn't resolve all the issues, we’ll advise you why we don't agree in a subsequent compliance report, and you’ll have another opportunity to respond via the case management facility.

Contact us for further information at any stage. If you've already received a compliance report, you may contact the examiner on the direct dial phone number listed at the bottom of the report.