Hearings Guidelines on Applications for Revocation

Hearings Guidelines on Applications for Revocation

IPONZ has recently updated its hearings guidelines relating to applications for trade mark revocation.

Following the recent decision by the Supreme Court in International Consolidated Business Proprietary Ltd v SC Johnson & Son Incorporated [2020] NZSC 110, the IPONZ Hearings Office has updated its practice guidelines with regards to applications for revocation.

In line with the Supreme Court decision, the updated guidelines provide further information about what effective date of revocation should be pleaded by the applicant to the proceeding. In summary, the effective date of an application for revocation should predate the application date of a pending trade mark applied for by the aggrieved person.

Additional guidance is also provided in terms of how the Office will treat applications for revocation which do not plead any effective date, or alternatively, when multiple effective dates can be pleaded.

Information about the available grounds for revocation have also been updated following the amendment to s 66(1) of the Trade Marks Act 2002 by s 130 of the Regulatory Systems (Economic Development) Amendment Act 2019.  This amendment to s 66(1) replaced the wording “registration of a trade mark may be revoked on any of the following grounds” with “grounds for revoking the registration of a trade mark are as follows”.

Finally, the IPONZ Hearings Office has clarified the turnaround time for processing revocation applications from 2 working days to 15 working days. This update is to reflect the Office's existing practice.