Amending Your New Zealand Trade Mark Application

In New Zealand, correcting a trade mark application is a formal legal process governed by sections 37 and 38 of the Trade Marks Act 2002. It is a process fraught with technical rules and critical risks. A simple “correction” filed incorrectly can be deemed a “material alteration,” leading to a change in your filing date, or even the rejection of your amendment. This could mean losing your priority to a competitor who filed after you.

The “No Material Alteration” Test

The single most important rule for any amendment after filing is found in Section 37(2)(b), i.e. the Commissioner can only correct an error or omission if it “does not materially alter the meaning or scope of the application”.

This is the central test upon which almost every correction is judged. A “material alteration” is any change that-

• Substantially alters the nature and scope of the rights you are claiming; or
• would necessitate a different type of examination and search by IPONZ.

Attempting an amendment that fails this test will be rejected. If an amendment is so significant that it broadens the scope of your application (for example, by adding new goods), the only way to have it accepted is if the filing date of your entire application is changed to the date the amendment request was processed. This loss of your original priority date can be catastrophic, as it opens the door for any competitor who filed in the interim to gain senior rights.

Our primary goal is to ensure your application is filed correctly from day one. But when amendments are needed, our expertise is focused on framing them to avoid this “material alteration” trap and preserve your filing date.

Amending the Specification

The most common amendment is a request to change the specification of goods or services. Under section 37(1), you are permitted to limit the specification at any time. This is a “narrowing” amendment and is almost always allowed.

However, this is a one-way street. The law is explicit, i.e. you cannot enlarge the specification or add something new. Furthermore, once you have limited your specification, you cannot later revert to the original, broader list. This is why we provide critical strategic advice before any limitation is filed, to ensure you are not unnecessarily sacrificing the future scope of your brand.

Correcting the Core Details

The Act allows for the correction of errors and omissions, but the rules vary depending on what is being corrected.

• Correcting the Applicant’s Name or Address

We can file a request to correct your name or address at any time. A change of address is simple. A change of name is highly technical.

This procedure is only for corrections where the legal ownership of the application remains the same. This includes:

• • Correcting an obvious spelling error.
  • Correcting a name from a non-legal entity (like an unincorporated society) to a legal entity.
  • Correcting an application from a Trust’s name to the names of the individual trustees, which is a common requirement.

If a company changes its name but remains the same legal entity, we manage this by filing a copy of the Certificate of Change of Name. If an individual changes their name, we can support the request with deed poll or marriage documentation.

This process cannot be used to change the ownership from one legal entity to another (e.g., from your personal name to your new company). That is considered a change in ownership, not a correction, and requires a formal assignment of the mark. We will advise you on the correct procedure.

• Correcting the Trade Mark Itself

This is one of the most difficult amendments to make. A request to change the trade mark itself is only allowed if it does not alter the mark to any material extent.

The examiner will compare the “look, sound, and idea” of the original mark and the proposed new mark. Any correction that requires a new search will be refused. You cannot use this to add distinctive material, such as adding a logo to a simple word mark.

This rule is particularly strict for non-traditional marks. For example, if you filed an application for the colour “yellow” without a specific definition, you cannot later amend the description to “yellow (Pantone® 101)”. This is considered a material alteration that changes the identity and character of the mark you originally applied for.

• Correcting the Class

If you file for goods in the wrong class, it can be corrected, but only in specific circumstances.

It is allowed if you file for “cosmetics and toiletries” in Class 2, we can file to correct this to Class 3, because all the specified goods belong in Class 3. This is a clear-cut error.

It is not allowed if you file for “non-alcoholic beverages” in Class 30 (which correctly covers coffee and tea), you cannot later request to change this to Class 32 (which covers juices and soft drinks). Because your original application was valid for some goods in Class 30, this change is considered a “material alteration” that broadens the scope of your application.

• Correcting Convention Priority Details

This is a critical, time-sensitive area. Under New Zealand law, a claim to “convention priority” (claiming the filing date of an earlier overseas application) must be made within two days of filing.

If you miss this window, you cannot add a priority claim later. This is deemed a material alteration and is strictly prohibited.

Our firm’s rigorous docketing and review system is designed to prevent this error. What we can correct are simple typos in a priority claim that was filed on time, such as an incorrect date, country, or application number.

The Formal Rejection and Hearing Process

What happens if the Commissioner believes your requested amendment is a “material alteration”? You will not simply be refused.

Instead, IPONZ must issue a Notice of Proposal to Reject Correction. This notice will explain the grounds for the proposed rejection and give you a deadline (not less than one month) to request a formal hearing on the matter.

This is a formal legal proceeding, and our firm is equipped to represent you. We will file the request for a hearing, which can be held in person or be based on detailed written submissions. We will then prepare and present the legal arguments to an Assistant Commissioner, advocating for why your amendment is not a material alteration and should be allowed.

Why Expert Handling of Amendments is Vital?

Amending a trade mark application is far more complex than simply correcting a form. It is a technical legal procedure where a single misstep can cost you your priority date or your entire application.

Our service is designed to provide security and expertise. We ensure your application is filed correctly from the start. If an error is caught on the day of filing, we can correct it immediately, preserving your filing date. If an amendment is required later, we analyze the “material alteration” risk, advise on the safest strategic path, and manage all documentation and legal arguments to protect your brand’s foundation. Contact us today for a free consultation.