Acceptance and Registration

Securing an acceptance for your trade mark application is a significant milestone. It means your application has successfully passed the rigorous examination process at the Intellectual Property Office of New Zealand (IPONZ). However, acceptance is not the end of the journey. It is the gateway to a critical public-facing phase that leads to the final, legally-enforceable registration of your brand. This stage, which moves from acceptance to advertisement and finally to registration, is governed by precise rules under New Zealand’s Trade Marks Act 2002. It involves strict public deadlines, potential challenges from third parties, and even the risk of an acceptance being withdrawn.

The Notice of Acceptance

Under section 40 of the Act, the Commissioner must accept an application once it is determined to comply with all legal requirements. This may happen because the application was correct as filed, or, more commonly, after we have successfully negotiated with the examiner and agreed to certain conditions or limitations to render the application compliant.

Once this determination is made, IPONZ issues a formal Notice of Acceptance. This notice is the official confirmation that your application has cleared the examination hurdle. But this acceptance immediately triggers the next, and most public, phase: advertisement.

Advertisement and the Opposition Period

Acceptance is not registration. Before your mark can be registered, it must be advertised to the public. This is a mandatory step under section 46 of the Act, where your application’s details are published in the official IPONZ Journal. The Notice of Acceptance we receive will indicate the precise date on which this advertisement will occur.

The purpose of this advertisement is to provide public notice of your intention to register the trade mark. This publication is critical because it starts a new, non-extendable countdown.

From the moment your mark is advertised in the Journal, any person has three months to file a formal opposition to your registration. This is the public’s only window to challenge your application. A third party may oppose your mark for many reasons, from claiming they have prior rights to arguing your mark is descriptive or non-distinctive.

Our team diligently monitors your application’s status. We ensure the advertisement is correct, and we closely track the three-month opposition deadline. If an opposition is filed, we will receive the notification, analyze the legal basis of the claim, and provide immediate counsel on the best strategy to defend your application.

Revocation of Acceptance

One of the most critical and least-understood risks in trade mark law is the revocation of acceptance. Even after a Notice of Acceptance has been issued, the Commissioner has the power under Section 42 of the Act to revoke that acceptance at any time before the mark is registered.

If acceptance is revoked, your application is treated as if it had never been accepted in the first place. It is immediately returned to the examination phase, and Section 39 of the Act applies once more.

This is a serious development, and it generally happens for two specific reasons:

• An Error or Omission by the Office- The Commissioner may revoke acceptance if it is found the application was accepted because of an error or omission made by IPONZ. This is not a simple “change of opinion”. The case law confirms this power is restricted to situations where the Office was mistaken about the facts or was in ignorance of a key fact at the time of acceptance.
• A Superior Priority Claim- This is a more common scenario in a global economy. Another company may file an international application that designates New Zealand and claims an earlier convention priority date that conflicts with your mark. If this new application is received by the Office after your mark was accepted, the Commissioner will revoke your acceptance to allow the application with the superior (earlier) priority date to be examined first.

If your application faces a “Notice of Intention to Revoke Acceptance,” it is a formal legal proceeding. In either case, you have the right to request a hearing on the matter. Our firm will act as your advocate, reviewing the Commissioner’s grounds for revocation, advising on the legal merits, and formally representing your interests at the hearing to challenge the revocation.

“Awaiting Registration”

Even after an application is accepted and the three-month opposition period passes without challenge, it may not be registered immediately. A peculiar timing rule in Section 50(2) of the Act states that the Commissioner must not register a trade mark until 6 months after the date of application for registration.

This means if your application moves through examination and opposition very quickly (for example, in four or five months), it will enter a state of “Accepted”. It will simply wait in this status until the six-month anniversary of its original filing date has passed.

We will keep you informed during this standard, procedural waiting period. It is not a cause for concern, but simply a final administrative requirement of the Act.

Registration and Your Certificate

You have cleared acceptance, the opposition period has passed, and the six-month waiting period is over. Your trade mark will now be formally registered.

Registration is the final, official act. On this day, IPONZ will enter all the details of your trade mark onto the legal register. This official record includes-

• Your trade mark and any conditions or limitations.
• Your name and address as the owner.
• The final specification of goods and services.
• The actual date of registration and, most importantly, the deemed date of registration (your priority date).
• Details of any convention priority claims.
• Any statements that the mark was registered based on evidence of use or “by consent”.

On the day of registration, the Commissioner issues the Certificate of Registration. Our firm will receive the notification, immediately download this official certificate from the IPONZ system, and deliver it to you for your records. This certificate is your legal proof of ownership, containing the trade mark number, a representation of your mark, the classes, the goods and services, and the actual and deemed dates of registration .

Your Rights and Ongoing Protection

Your New Zealand trade mark registration lasts for 10 years. This 10-year term is calculated from the deemed date of registration (your filing or priority date), not the date the certificate was issued. The registration can then be renewed for further 10-year periods, indefinitely, allowing your brand rights to last forever as long as they are maintained.

While registration is a powerful asset, it is important to remember that it is not a set-and-forget shield. Even after registration, an “aggrieved person” can still apply to the Commissioner to have the mark cancelled, revoked for non-use, or declared invalid.

Our relationship with our clients extends far beyond securing the initial registration. We manage your renewal deadlines, advise on strategies for use to defend against revocation, and stand ready to defend your registration from any post-grant challenges. Contact us today for a free consultation.