Merging Your New Zealand Trade Mark Applications

You may have filed a multi-class application that received an objection in only one class. To get your core brand registered for the “clean” classes, we would have advised you to file a “divisional application.” This is a smart, tactical move that isolates the problematic goods or services into a new “child” application, allowing your main “parent” application to proceed to registration without delay.

But what happens next? After we have successfully resolved the issue with the child application, perhaps by overcoming the objection or settling an opposition, you are left with two (or more) separate registrations for the exact same trade mark.

This is where the “merger” procedure comes in.

A merger is a formal, no-fee legal process that allows us to recombine these separate applications or registrations back into a single, unified file. It is the final, strategic step that reverses a division, streamlines your IP portfolio, and ultimately reduces your long-term management costs.

Why Merge Your Trade Mark Registrations?

The most common reason for merging trade marks is to reunite applications that were previously divided to overcome an examination hurdle.

Let’s walk through a common scenario-

• Our firm files your new brand, “Evergreen,” in a single application covering Class 25 (clothing), Class 35 (retail services), and Class 41 (events).
• The IPONZ examiner issues a Compliance Report citing a conflict with a prior mark, but only for “retail services” in Class 35.
• To get your brand protected immediately, we file a divisional application. We move the “problem” Class 35 into a new “child” application. The “parent” application for Classes 25 and 41 is now clear and proceeds to registration.
• Over the next year, we successfully negotiate a consent agreement with the owner of the cited mark, resolving the conflict for Class 35.
• You now own two separate registrations for “Evergreen,” each with its own renewal date and maintenance requirements.

This is the perfect time for a merger. We can now combine these two registered marks back into a single registration. The result is a much cleaner, more efficient IP asset. Instead of managing and paying renewal fees for two separate registrations for the next 10, 20, or 50 years, you will only have one. This simplifies your portfolio, reduces future costs, and makes your brand a more attractive, less complicated asset for licensing, sale, or investment.

The Strict Legal Test

While the logic of a merger is simple, the legal requirements are rigid and absolute. The Commissioner of Trade Marks must be satisfied that all applications or registrations to be merged meet five specific criteria. An application that fails even one of these tests will be rejected.

Our expertise is in ensuring 100% compliance with these rules before we file the request.

The Marks Must Be Identical

This is the most critical and strictest rule. The marks in all the applications must be identical. Not “similar,” not “confusingly similar,” but identical. This includes marks that are part of a series; they cannot be merged with their parent application if they are not identical to it. This is why the merger procedure is almost exclusively used for divisional applications, where the mark itself has not changed.

The Filing and Priority Dates Must Match

All applications or registrations to be merged must have the exact same filing date. They must also share the exact same convention priority dates, if any apply. If one application claims priority and the other does not, or if they claim different priority dates, they cannot be merged. This is the legal “DNA” that proves they originated from the same parent application.

The Applications Must Have the Same Status

You cannot merge applications that are at different stages of their life. The Commissioner requires that all applications to be merged have the exact same status at the time of the request.

• All applications must be “Under Examination”, or
• All registrations must be “Registered”; or
• All registrations must be “Registered – past expiry date”. This requires careful management from your legal team. We cannot merge a pending application with an already registered one. We must ensure both have achieved the same status before we can act.

The Owner Name Must Be Identical

The owner listed on every application or registration must be exactly the same. A minor difference in the legal name (e.g., “Example Co” vs. “Example Co. Limited”) is grounds for refusal. As part of our service, we first conduct a portfolio audit to ensure all your owner details are perfectly aligned before filing the merger request.

The Classification Must Be the Same

All applications must be classified according to the same edition of the Nice Classification. This is generally a formality, as applications with the same filing date will automatically meet this requirement.

The Merger Process

Once we have completed our pre-merger audit and confirmed that all five legal requirements are met, we will handle the entire process.

We prepare and file the formal application for merger, which must include the application numbers of all the applications or registrations to be merged. There is no official IPONZ fee for this request.

When the application is approved by the Commissioner, all the separate applications are merged into a single file known as the “header file”. This header file is always the application or registration that has the lowest application number, which is typically the original “parent”  The other “child” application numbers are then marked as “merged” in the official IPONZ database.

The final result is a single, clean registration that contains all the classes and goods/services from the previously separate files, all under one number. This unified registration retains the original filing and priority dates from the parent application, as if it had never been divided at all.

If the request is not in order and fails to meet the strict 5-point test, the Commissioner will issue a Notice of Rejection of Merger. Our thorough pre-filing audit is designed to prevent this outcome and ensure a smooth, successful consolidation.

Why work with us?

A divisional application is a powerful tactic to solve a short-term examination problem. A merger is a powerful strategy to ensure the long-term health and efficiency of your IP portfolio.

By reuniting your divided marks, you simplify your administrative burden, reduce your future renewal costs, and create a cleaner, more valuable asset. Our firm is dedicated to managing the full lifecycle of your brand, from the initial filing, through complex divisional tactics, to the final, strategic merger that unifies your rights. Contact us today for a free consultation.