Acceptance and registration

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Intellectual Property Office of New Zealand

Practice guidelines

In this practice guideline

Acceptance and registration

Sections 40, 46, 50, 51

1. Introduction

Subpart 2 of Part 3 of the Trade Marks Act 2002 (the Act) provides for the application, examination and acceptance of a trade mark. Subpart 4 of Part 3 of the Act provides for the registration of a trade mark application. These guidelines focus on the acceptance and advertisement of a trade mark application under sections 40 and 46 of the Act and the registration of a trade mark under sections 50, 51 and 53 of the Act.

Section 40 of the Act prescribes when a trade mark application must be accepted and section 46 of the Act prescribes when a trade mark application must be advertised.

Section 50 of the Act prescribes when a trade mark must be registered. Section 50 of the Act prescribes the Commissioner's requirements on registration. Section 53 of the Act prescribes the requirements for a replacement certificate of registration.

Section 182 of the Act prescribes the contents required on the register. Regulation 129 of the Trade Marks Regulations 2003 (the Regulations) prescribes the additional contents required on the register. Regulation 130 of the Regulations prescribes the contents of the certificate of registration.

2. Acceptance

Section 40 of the Act states:

The Commissioner must, subject to any conditions the Commissioner thinks fit, accept an application that complies with the requirements of this Act.

An application will be considered to comply with the Act where all three of the requirements set out in section 13(2) of the Act have been met. Therefore, where an application complies with the requirements of the Act, the Commissioner must accept the application.

Where an application complies with the requirements of the Act in the form in which it was filed, the Commissioner must accept the application as is. Alternatively, the Commissioner may also accept the application after the applicant has agreed to any conditions the Commissioner thinks fit. It follows that the Commissioner may only impose conditions where they are necessary in order to render the application compliant with the Act.

If an application complies with the requirements of the Act, the application will be accepted, and IPONZ will send the applicant a Notice of Acceptance. The Notice serves only to represent confirmation of the acceptance of the application.

2.1 Advertisement

Pursuant to section 46 of the Act, all accepted applications must be advertised. The application will be advertised in the Journal. Advertisement provides the public with notice of the proposed registration of the trade mark. The Notice of Acceptance will indicate the date on which the application will be advertised.

IPONZ considers a mark to be “first advertised” under regulation 75 of the Trade Marks Regulations 2003 when it is advertised in the Journal. Any persons who wish to oppose the registration of the trade mark then have three months from the date of the advertisement in the Journal in which to do so 1 .

2.2 Re-advertisement

2 Where there has been an error in the advertisement of a trade mark, or a trade mark has been corrected after advertisement, the mark may be re-advertised. A full re-advertisement will only be made for the following:

  • A correction to the class or classes;
  • Amendment to the nature of the mark;
  • Where the trade mark image is upside down;
  • A correction to the trade mark;
  • Significant errors in the specification of goods or services; or
  • Upon request from the applicant.

2.3 Awaiting registration

Some trade marks may be accepted by IPONZ and complete the three month period for opposition before the end of the six-month convention priority period is completed. However, section 50(2) of the Act states:

The Commissioner must not register a trade mark until 6 months after the date of application for registration.

Therefore, registration will only occur once at least six months have passed since the date of application. IPONZ will not register a mark until the six-month period is completed. Trade marks that are in this period will show as accepted in the IPONZ database.

2.4 Revocation of acceptance

2.4.1 What is revocation of acceptance?

The acceptance of an application can be revoked if information comes to notice after acceptance that indicates the trade mark should not have been accepted.

Section 42 of the Act states:

  1. The Commissioner may revoke the acceptance of an application before the trade mark to which the application relates is registered if the Commissioner is satisfied that— 
    1. the application was accepted because of an error or omission made by the Commissioner; or
    2. another application that relates to the trade mark has priority under section 36.
  1. If the Commissioner revokes the acceptance of an application,—
    1. the application is to be treated as if it had not been accepted; and
    2. section 39 again applies to the application.

Therefore, the Commissioner has discretion to revoke the acceptance of an application if there has been an

  • error or omission made by the Office, or
  • an international application for a conflicting mark having an earlier priority date is received by the Office.

Once an application has been revoked it re-enters examination status and Section 39 of the Trade Marks Act 2002 applies. At this stage the Applicant will be granted time to overcome the objections raised.

2.4.2 Error or Omission by the Office

If it is found the application should not have been accepted due to an error or omission by the Office then the Commissioner will issue a notice of intention to reject acceptance.

In apples 4 Apples Quoting Services Ltd T24/2008, Assistant Commissioner Jones confirmed that acceptances in error must be restricted to cases where the Office is:

  • mistaken as to the facts; or
  • in ignorance of the facts.

It cannot be extended to the reversal of a decision simply because the Office has had a change of opinion as to the way the facts should be interpreted.

When a notice of Intention to revoke acceptance is issues by the Office the Applicant has the right to request a hearing, under Section 176 of the Trade Marks Act 2002.

2.4.3 Convention priority 

If an international application for a conflicting mark is receive by the Office that has an earlier priority date than the accepted mark the Commissioner will issue a notice of intention to reject acceptance.

In cases of convention priority the acceptance will generally only be revoked once it has been established that the priority claim is valid under Section 36 of the Trade Marks Act 2002.

When a notice of Intention to revoke acceptance is issues by the Office the Applicant has the right to request a hearing, under Section 176 of the Trade Marks Act 2002.

3. Registration

An application that has been accepted and advertised will be registered if it has not been opposed, or if all opposition proceedings have either been withdrawn or have not been successful 3 .

A trade mark registration lasts for 10 years from the deemed date of registration 4  and may be renewed for further periods of 10 years at a time 5 . For more information on the duration of registration, renewals and restoration, see the Practice Guidelines on Renewal and Restoration.

3.1 Details held on the register

On the registration of a trade mark, IPONZ will enter or confirm the following details on the register 6 :

  1. The trade mark including, where applicable, any conditions or limitations;
  2. The owner’s name and address;
  3. The trade mark number assigned to the trade mark;
  4. The actual date of registration;
  5. The deemed date of registration;
  6. The filing date;
  7. The details of any claim for convention priority:
  8. The specification of goods and services in each class and the edition of the Nice Classification or the relevant Schedule number under the Trade Marks Act 1953;
  9. Where the registration is made with the consent of the owner of another trade mark or an application for registration, the word “by consent” and the registration or application number of the other mark;
  10. Where applicable, a statement that the mark was registered on the basis of evidence of use or distinctiveness;
  11. The date the registration is due to expire;
  12. The date of conversion of a specification, if applicable;
  13. The details of any assignments or transmissions; and
  14. Any memorandums, if applicable.

3.2 Certificate of registration

On registration the Commissioner will enter the deemed and actual dates of registration on the Register and issue to the applicant, a certificate of registration 7 . A notification is sent to the owner’s communication address that a certificate has been issued. The certificate can be downloaded from the trade mark case in the IPONZ system.

The certificate of registration will contain the following information 8 :

  • The trade mark number assigned to the trade mark;
  • A representation of the trade mark;
  • The class or classes in which the trade mark is registered;
  • The actual and deemed date of registration; and
  • The goods and services for which the trade mark is registered.

In addition to the above mandatory information the following details will also be included on the certificate of registration 9 :

  • The owner’s name and business or residential address;
  • The communication address, if any; and
  • Whether the registration is for a series, certification, or collective trade mark, if applicable.

Following the registration of a trade mark, an aggrieved person may apply to the Commissioner to have the trade mark registration cancelled 10  or altered 11 , revoked 12  or declared invalid 13 . Any other person may apply to rectify 14  the trade mark.

3.3 Replacement certificates of registration

The owner of a registered trade mark may request an additional copy of the certificate of registration through our online system 15 .

3.4 Certified copy of entry in register

The Commissioner will, on the request of any person, provide that person with a certified copy of an entry in the Register 16 . An application for a certified copy of an entry in the Register can be made through our online system 17 .

Last updated 31 July 2012

Footnotes

  • 1 Practice Guideline Amendment 2003/01, Information For Clients, Issue 28: 30 September 2003
  • 2 Practice Guideline Amendment 2006/02, IPONZ Newsletter, May 2006
  • 3 See section 50(1) of the Act. Note, however, that the application will not be registered if the Commissioner intends to revoke the acceptance of the application pursuant to section 42 of the Act.
  • 4 See section 57 of the Act. See section 5 of the Act for the definition of “deemed date of registration”.
  • 5 Section 58 of the Act
  • 6 Sections 51(a) and 182 of the Act and regulation 129 of the Regulations
  • 7 Section 51 of the Act
  • 8 Regulation 130 of the Regulations
  • 9 Regulation 130(2) of the Regulations
  • 10 Sections 62-64 of the Act
  • 11 Sections 62-64 of the Act
  • 12 Sections 65-68 of the Act
  • 13 Sections 73-74 of the Act
  • 14 Section 76 of the Act
  • 15 Section 53 of the Act
  • 16 Regulation 131(1)(a) of the Regulations
  • 17 Regulation 131(2) of the Regulations

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