Application for rectification of trade mark by third party

Introduction

Any person who has an interest may apply under section 76 for the rectification of the Register to correct an ‘error’ or ‘omission’ provided it does not affect the validity of the registration of a trade mark. If successful, the error or omission concerned is to be treated as if it had never existed unless the Commissioner or the court directs otherwise.

Rectification is not intended for general amendment requests. If a trade mark owner requires alteration of their trade mark application, or amendment of the register in respect of their registered trade mark, they should file a request under sections 37 or 78 respectively.

For the purpose of this guidance, hereafter the term ‘trade mark registration’ is used to refer to either a national trade mark registration or an International Registration protected in New Zealand (IRPNZ).

Application for rectification process overview

• Applicant files an application for rectification.
• Within 2 months, the owner may oppose the application by filing a counterstatement.
• Within 2 months, the applicant must file evidence in support of their position.
• Within 2 months, the owner may file evidence in support of their position.
• Within 1 month, the applicant may file evidence strictly in reply to the owner’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, 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 Intellectual Property Office of New Zealand (IPONZ) hearings. It reflects the current accepted practice of IPONZ and is to be read in conjunction with the:

• Trade Marks Act 2002; and
• Trade Marks Regulations 2003; and
• Trade Marks (International Registration) Regulations 2012

Please note the process for an application for rectification against a (1) national trade mark registration or (2) IRPNZ is largely identical. There are, however, some differences which the parties need to be aware of.

See international trade mark proceedings for more information.

Before filing an application

IPONZ recommends that a party considering filing an application for rectification contacts the trade mark owner directly about their concerns before filing their application to see if the matter can be resolved amicably without the need for formal rectification 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 proceedings.

See costs awards for more information.

1. Application for rectification

Section 76, Regulations 86 and 87, International Regulations 21 and 22

Purpose

The purpose of the application for rectification (also referred to as the applicant’s pleadings) is to outline the grounds on which the applicant alleges the Register should be rectified to correct an ‘error’ or ‘omission’.

Error or omission

What constitutes an ‘error’ or ‘omission’ for the purpose of section 76 has been the subject of a number of decisions.

Prior to these decisions, it had been suggested that this section was relevant only to the correction of minor, clerical errors. However, in Harkness & Young Limited v Hartman Pacific Pty Limited ¹ the Assistant Commissioner noted there had been at least one decision under section 76 of the Act dealing with matters that were “clearly more than clerical in nature”. The Commissioner cited Besco Batteries NZ Ltd v Century Batteries Ltd, ² which involved the fraudulent assignment of trade marks by an employee. ³ On that basis, the Commissioner held that “rectification under section 76 of the Act may extend to matters that are more substantial than the simple correction of a simple clerical error”. ⁴

When is rectification available

In Harkness & Young Limited v Hartman Pacific Pty Limited the Commissioner confirmed that rectification is only available where another purpose-made section of the Act does not cover the relief being sought. ⁵ In reaching this conclusion, she noted that “it would be disturbingly easy to subvert long-standing tenets of trade mark law by dressing up actions for revocation or invalidity as applications for rectification”. ⁶

Onus of proof

The onus of proof is on the applicant for rectification, and the standard of proof is the balance of probabilities. ⁷

Requirements for application for rectification

The application for rectification must:

• be in writing; and
• be signed by the applicant. ⁸  

The application must also contain the following information specified in regulation 87:

• the name and address for service of the applicant;
• if the applicant has an agent, the agent’s name;
• the number of the trade mark registration to which the application relates;
• the class/es, or the goods or services, to which the application relates;
• the extent to which rectification is sought; 
• the grounds for rectification and the provisions of the Act to which those grounds relate; and
• a statement of the basis on which the applicant claims to be a person who has an interest for the purposes of section 76(1) of the Act.

When filing the application through the IPONZ case management facility please take care to ensure the ‘Applicant’ and ‘Owner’ fields are correctly entered. The Applicant is the party filing the application for rectification. The Owner is the party that owns the trade mark application or registration.

IPONZ will normally process the application for rectification within two working days.

Where can an application for rectification be filed?

A person who has an interest can apply to either the Commissioner, via IPONZ, or the High Court for the rectification of a registered trade mark. In most cases, applications are filed with IPONZ in the first instance because it is seen as the more accessible forum.

Person who has an interest

An application for rectification can only be made by a “person who has an interest”.

The term “person who has an interest” is to be given a liberal or wide interpretation. ⁹ It conveys a lower threshold than the term “aggrieved person”, which is discussed in the invalidity guidelines. A person who has an interest may be the trade mark owner or a person who has a significant business relationship with the owner. ¹⁰

The party who is applying for rectification must be able to show that, at the relevant date, they had an interest in the rectification of the trade mark registration. The Applicant should include proof of the reasons as to why they are a person with an interest when filing their evidence during the proceeding.

Grounds for rectification

The application for rectification needs to clearly set out the grounds relied upon by the applicant and must also include a clear reference to the relevant section/s of the Act to which those grounds relate. ¹¹ If the grounds are not pleaded clearly, the application may not be admitted by IPONZ.

2. Counterstatement

Regulations 88 and 89

Once an application for rectification has been filed, the Commissioner will notify the trade mark owner and provide them with a copy of the application for rectification. The trade mark owner then has two months to file a counter-statement if it wishes to defend its trade mark registration.

The purpose of the owner’s counterstatement (also referred to as the owner’s pleadings) is to clarify which assertions in the application for rectification the owner either accepts or denies. This process is used to determine which matters are actually in contention so that the parties can focus their efforts on these contentious matters when preparing and filing their evidence, instead of 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 89:

• the owner’s name and address for service;
• if the owner has an agent, the agent’s name;
• a response to the applicant’s grounds for rectification, by admitting, denying, or claiming lack of knowledge of, each assertion made in the application for rectification;
• a brief statement of the facts on which the owner relies in support of the registration; and
• be signed by the owner.

IPONZ recommends addressing each assertion made by the applicant by reference to the corresponding paragraph number in the application for rectification. For example, “the owner accepts that the applicant is the owner of trade mark No. 123456 TRADE MARK cited at paragraph 6 of the application but denies that it contains an error in class 5” or “the owner has no knowledge of the information contained in paragraph 7”. This approach will ensure the owner has responded to all assertions in the application.

The brief statement of facts should (briefly) outline the general facts and reasons why the owner considers the register should not be rectified.

Please note the owner should not file any evidence with its counterstatement. The owner will be given an opportunity to file its evidence later in the proceedings.

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

If the owner does not file a counterstatement on or before the deadline as notified by IPONZ, the application for rectification will be determined on the documents filed by the applicant only. The owner plays no further part in the proceedings.

In this situation, IPONZ will provide the applicant with an opportunity to file evidence, and to be heard before the Assistant Commissioner, who will determine whether a case has been made that the trade mark application or registration requires rectification.

3. Applicant’s evidence

Regulations 33, 90 and 91

From the date the Commissioner sends the applicant the owner’s counterstatement, the applicant has 2 months to either:

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

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

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

The applicant’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 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 its case management facility does not constitute service on the other side.

The application for rectification proceeding will be discontinued under regulation 91 if the applicant fails to do (a), (b) or (c) above by the applicable deadline.

4. Owner’s evidence

Regulations 33 and 92

The owner may file evidence in support of its trade mark registration within two months of either:

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

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

The owner’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 owner 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.

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

5. Applicant’s evidence strictly in reply

Regulations 33 and 93

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

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

6. Extensions of time and halts

Regulations 28 and 32

At any stage in a rectification proceeding after the application for rectification 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 for more information.

7. Withdrawal

Parties may withdraw from a rectification proceeding at any time. However, they should consider reaching an agreement with the other side as to costs before withdrawing from the proceeding otherwise costs may be still be awarded against them.

See costs for more information.

8. Hearing

Regulations 122, 125, 126 and 127

Once the evidential stages of the rectification proceeding are complete, we 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.

(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 by three working days prior to the hearing date.
• Payment of the hearing fee is due 10 working days before the hearing date.

See fees for more information.

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

9. 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 our case management facility.

See costs awards for more information on costs.

All IPONZ hearings decisions are published on the NZLII website.

10. 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

11. Rectification of international registrations protecting New Zealand

Regulation 22(1) of the Trade Marks (International Registration) Regulations 2012)  — New Zealand Legislation

With regard to an international registration protecting New Zealand, if the registration is rectified, IPONZ will notify the International Bureau of the extent that the registration has been rectified, as required by legislation.

Footnotes

• 1 Harkness & Young Limited v Hartman Pacific Pty Limited [2014] NZIPOTM 35
• 2 Besco Batteries NZ Ltd v Century Yuasa Batteries Pty Ltd [2006] NZIPOTM 3
• 3 Ibid at [71]
• 4 Supra n1 at [72]
• 5 Supra n1 at [75]
• 6 Supra n1 at [78]
• 7 Bio Cosmo (NZ) Ltd v Kinki Pipe Co Ltd [2004] NZIPO 2 at [4]
• 8 Regulation 86
• 9 Supra n1 at [60] citing Fareed Khalaf Sons Company trading as Khalaf Stores v Phoenix Dairy Caribe NV HC Wellington CIV 2002-488-000207, 3 September 2003 at [23].
• 10 Supra n1 at [62]
• 11 In Rainbow Technologies Inc v Logical Networks Ltd [2003] 3 NZLR 533 (HC), it was confirmed that grounds should be pleaded accurately and fully. Hammond J stated that “…proper attention needs to be paid to Notices of Opposition and Counter Statements because these form the “pleadings” in a trade mark cause.” Hammond J then went on to state at para 66 “A party is responsible for the advancement of his or her own case, and for the making it plain what is being put in issue.”