Opposition to registration of a trade mark

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Intellectual Property Office of New Zealand

Trade Mark Hearings

In this guideline

Opposition to registration of a trade mark

Introduction

A person who believes:

  • an accepted national trade mark application; or
  • an accepted International Registration designating New Zealand for protection (hereafter referred to as an NZD) 

should not be registered, may file a notice of opposition within three months of publication in the Journal of the acceptance of the national trade mark application or NZD.

Opposition is an objection to the registration of the national trade mark application or NZD in the form it was advertised.

For the purpose of this guidance, hereafter the term ‘trade mark application’ is used to refer to either a national trade mark application or NZD.

Opposition process overview

  • Opponent files notice of opposition.
  • Within two months, applicant files counter-statement. If not filed, the trade mark application is considered abandoned.
  • Within two months, opponent files evidence in support of their position.
  • Within two months, applicant files evidence in support of their position.
  • Within one month, opponent may file evidence strictly in reply to the applicant’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 before the Assistant Commissioner, or any other way the parties elected to be heard, 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 IP hearings. It reflects the current accepted practice of IPONZ and is to be read in conjunction with the:

Links to which are provided throughout. 

Please note the process for opposition against both a (1) national trade mark applications or (2) NZD is largely identical. There are, however, some differences which parties need to be aware of.

See international trade mark proceedings for more information.

1. Advertisement

Section 46, International Regulation 15

When an application for registration of a trade mark is accepted by the examination section of the Intellectual Property Office of New Zealand (IPONZ), the accepted trade mark application is advertised in the Journal.

Anyone can oppose the registration of the accepted trade mark application by filing a notice of opposition within three months from the date of its advertisement in the Journal.

IPONZ recommend that a potential opponent contacts the trade mark applicant directly about their concerns before filing a notice of opposition to see if the matter can be resolved amicably without the need for formal opposition 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 proceeding. The three month opposition period, and the extension periods discussed below, should provide parties with an opportunity for these discussions to take place.

See costs information.

If the parties are unable to resolve the matter amicably, the opponent will need to file a notice of opposition.

2. Extension of time to oppose

Regulation 75(2), International Regulation 16(3)

Possible opponents may apply to extend the period of time to oppose by

  • One month, without the applicant’s consent, and
  • Two months, with the applicant’s consent.

For the avoidance of doubt, the maximum available extension to the opposition period is three months if both available periods are used.

A request for an extension of time must be made in writing, and must include the following information:

(a) the name and address for service of the opponent, 1
(b) if the opponent has an agent, the agent’s name, 2
(c) the number of the trade mark application that they considering opposing 3 and
(d) the period of time of the extension sought. 4

IPONZ will consider whether the extension of time request meets the regulatory requirements, and will notify the possible opponent and the applicant of its decision.

Please note that it's not possible to halt an opposition proceeding until such time as the proceeding has actually been launched by the filing of a notice of opposition. An extension to oppose does not constitute an opposition proceeding, it merely extends the time available to commence an opposition proceeding. This is particularly pertinent in NZD opposition cases where delays in IPONZ advising the International Bureau that an opposition has been launched could result in a 'non-correctable irregularity', which would prevent the opponent from being able to pursue its opposition to the NZD.

3. Notice of opposition

Section 47, Regulations 73 and 74

Purpose

The purpose of the notice of opposition (also referred to as the opponent’s pleadings) is to outline the grounds on which the opponent alleges the opposed trade mark should not be registered.

Full or partial opposition

An opponent can oppose the trade mark application for all, or just some, of the goods and/or services specified in the application. This is achieved by stating whether the opposition is a ‘full’ or ‘partial’ opposition. Where the opponent is filing a partial opposition, the opponent must list the opposed classes, goods, and/or services that are being opposed in the notice of opposition. For example, this may be relevant if there are only some classes, goods, or services that are causing confusion in the market place between the parties’ trade marks.

The Commissioner upon determining the outcome of a proceeding will also determine whether the opposition grounds have been made out in respect of the whole trade mark application or only part of the trade mark application.

Requirements for the notice of opposition

The notice of opposition must:

  • be in writing;
  • be accompanied by the prescribed fee; and
  • be signed by the opponent.

The notice of opposition must also contain the following information specified in regulation 74:

  • the name and address for service of the opponent;
  • if the opponent has an agent, the agent’s name;
  • the number of the trade mark application;
  • the class/es, or the goods or services, to which the opposition relates;
  • the grounds of opposition and the provisions of the Act to which those grounds relate [it is therefore important that the opponent cite the relevant sections of the Act to which their grounds relate e.g. s17(1)(a)]; and
  • if a ground of opposition relates to section 25 of the Act, the trade mark numbers of the earlier trade marks relied upon by the opponent.

When filing the application through the IPONZ case management facility, take care to ensure the ‘Applicant’ and ‘Opponent’ fields are correctly entered. The Opponent is the party filing the notice of opposition. The Applicant is the party applying to register the trade mark.

IPONZ will normally process the notice of opposition within two working days.

Grounds of opposition

Sections 17, 18 and 25

The notice of opposition needs to clearly set out each of the grounds relied upon by the opponent and must also include a clear reference to the section of the Act to which those grounds relate. If the grounds are not pleaded clearly, the notice may not be accepted by IPONZ. 5

The onus is on the applicant for registration of the trade mark to establish that the proposed trade mark is registerable. 6  Grounds include:

  1. The trade mark applicant is not entitled to claim to be the owner of the mark. 7
  2. The use of the mark would be likely to deceive or cause confusion. 8
  3. The use of the mark is contrary to New Zealand law, or would otherwise be disentitled to protection in any court. 9
  4. The use of the registration would be likely to offend a significant section of the community, including Māori. 10
  5. The trade mark application was made in bad faith. 11
  6. The trade mark is not a 'sign' or a 'trade mark'. 12
  7. The trade mark is non-distinctive. 13
  8. The trade mark consists only of signs or indications that designate the nature or characteristics of the goods or services. 14
  9. The trade mark consists only of signs or indications that have become customary in trade for the goods or services. 15
  10. The trade mark is identical or similar to another registered trade mark for the same or similar goods and/or services, and its use is likely to deceive or confuse. 16
  11. The trade mark, or an essential element of it, is identical or similar to a well-known mark in New Zealand, and the use of which would be taken as indicating a connection in the course of trade with the owner of the well-known mark, and would be likely to prejudice the interests of the owner. 17

If the opposition proceedings are in relation to a ground under section 25 of the Act, due to identical or similar trade marks that are registered or have priority of the application, for the same or similar goods or services, the opponent must ensure that they clearly refer to their earlier registrations and/or applications within their notice.

4. Counterstatement

Section 48, Regulation 79, 80 and 81, International Regulation 17

Once a notice of opposition has been filed, the Commissioner will notify the trade mark applicant, and provide them with a copy of the notice of opposition (either directly for a national trade mark application or via the International Bureau for an NZD).

The trade mark applicant then has two months to file a counterstatement if it wishes to defend its trade mark application.

The purpose of the applicant’s counterstatement (also referred to as the applicant’s pleadings) is to clarify which assertions in the notice of opposition the applicant 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 specified in Regulation 80:

  • The name and address for service of the trade mark applicant.
  • If the applicant has an agent, the agent’s name.
  • A response to the opponent’s grounds of opposition, by admitting, denying, or claiming lack of knowledge of, each assertion made in the notice of opposition.
  • A brief statement of the facts on which the applicant relies in support of its application for registration.
  • Be signed by the applicant.

IPONZ recommend addressing each assertion made by the opponent by reference to the corresponding paragraph number in the notice of opposition. For example, “the applicant accepts that the opponent is the owner of trade mark No. 123456 TRADE MARK cited at paragraph 6 of the notice of opposition but denies that it is confusingly similar to its trade mark” or “the applicant has no knowledge of the information contained in paragraph 7”. This approach will ensure the applicant has responded to all assertions in the notice of opposition.

Please note the applicant shouldn't file any evidence with its counterstatement. The applicant will be given an opportunity to file its evidence later in the proceeding.

IPONZ will send a copy of the counterstatement to the opponent within 15 working days of it being filed.

Consequences of not filing a counterstatement

It is important that the applicant files a valid counterstatement on or before the deadline as notified by IPONZ. Failure to do so will result in:

  • a national trade mark application being deemed abandoned under section 48(2) of the Act, or
  • an NZD being deemed withdrawn for the opposed class(es) of goods and/or services under International Regulation 17(4).

5. Opponent’s evidence

Regulations 33, 82 and 83

From the date the Commissioner sends the opponent the applicant’s counterstatement, the opponent has two months to either:

(a) file evidence in support of the opposition; or

(b) notify the Commissioner they do not intend to file evidence; or

(c) notify the Commissioner they wish to withdraw their opposition.

The opponent’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 opponent 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.

The opposition proceeding will be discontinued under regulation 83 if the opponent fails to do (a), (b) or (c) above by the applicable deadline.

This will result in the trade mark application proceeding to registration (in the absence of any other opposition proceedings).

6. Applicant’s Evidence

Regulations 33 and 84

The applicant may file evidence in support of its trade mark application within two months of either:

(a) being served a copy of the opponent’s evidence; or

(b) being notified of the opponent’s intention not to file evidence.

The applicant’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 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 our case management facility doesn't constitute service on the other side.

If the applicant decides not to file evidence, this will conclude the evidential stages of the proceeding. The case will then be ready for a hearing.

7. Opponent’s evidence strictly in reply

Regulations 33 and 85

If the applicant files evidence, the opponent may file evidence strictly in reply within one month of being served with a copy. It follows that the opponent cannot file evidence strictly in reply where the applicant 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 opponent must also serve a copy on the applicant.

Once the opponent has filed its evidence in reply, or the deadline for this has passed, the case will be ready for a hearing.

8. Extensions of time and halts

Regulations 28 and 32

At any stage in an opposition proceeding after the notice of opposition 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 guidelines.

9. Withdrawal

Parties may withdraw from an opposition proceeding at any time. However, they should consider reaching an agreement with the other side as to costs before withdrawing from the opposition (or withdrawing the opposed trade mark application) otherwise costs may be still be awarded against them.

See costs guidelines.

10. Hearing

Regulations 122, 125, 126 and 127

Once the evidential stages of the opposition proceeding are complete, the IPONZ hearings office will ask the parties how they wish to be heard. The parties may elect one of the following options:

(a) 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.

(b) 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. 18

(c) 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 prior to the hearing date.
    • Payment of the hearing fee is due 10 working days before the hearing date. 19

See fees guidelines for more information. 

Wellington is the primary venue for hearings by appearance. However, the IPONZ Hearings Office will consider requests by the parties to hold hearings in either Christchurch or Auckland if this better suits them. 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 these 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.

11. Assistant Commissioner’s written decision

Regulation 162

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 guidelines for more information.

All IPONZ hearing decisions are published on the New Zealand Legal Information Institute website.

12. Appeal

Sections 170, 171 and 174  — New Zealand Legislation

Parties may appeal the Assistant Commissioner’s decision within 20 working days by:

(a) filing a notice of appeal and application for stay of proceedings in the High Court; and
(b) 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.

Please see our guidelines on appeals and stays of proceeding for more information.

Trade Mark hearing decisions: Appeals and Stay of Proceedings

Footnotes

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