Overcoming Citations in New Zealand

After investing time and money into your new brand, you are now told it cannot be registered because it conflicts with another trade mark on the register. This objection, known as a “citation,” is raised under Section 25 of the Trade Marks Act 2002.

This is the single most common reason for a trade mark application to be refused. However, it is crucial to understand that a citation is not a final rejection.

The “Serving Notice”

First, it is important to dispel an outdated myth. Under the old 1953 Act, it was sometimes possible to overcome a citation by simply serving notice on the owner of the other mark. This practice is no longer a valid method and has not been for many years. You cannot simply “notify” the other party and proceed. You must legally resolve the conflict.

Obtaining Written Consent (Section 26(a))

The most straightforward and certain path to overcoming a citation is to obtain formal, written consent from the owner of the cited mark. Under Section 26(a) of the Act, the Commissioner must register your mark if this consent is provided.

This is a delicate negotiation, not a simple request. As your legal representatives, we manage this entire process. A valid consent is a formal legal document that must meet several criteria to be accepted by IPONZ:

• It must clearly identify your trade mark application by its application number.
• It must clearly identify the person giving consent and be signed by them, or by someone with proven authority (like a director on company letterhead).
• It must explicitly state consent for the registration of your mark.

If the owner of the cited mark is a parent or subsidiary company, this is often the most efficient solution. In some cases, we can also negotiate a “general letter of consent,” which allows one party to consent to any future applications filed by the other, streamlining your brand expansion.

Proving “Honest Concurrent Use” (Section 26(b))

If consent is not possible, we can turn to a powerful evidence-based argument, i.e. honest concurrent use.

This strategy, allowed under Section 26(b), argues that you have been using your mark in the marketplace “honestly” and at the same time as the cited mark, and that it is “proper” for your registration to be allowed.

The onus is entirely on the applicant to prove this, and it requires a substantial submission of formal evidence. Our firm will work with you to build this case, which must be submitted in the form of one or more statutory declarations.

To be successful, we must satisfy the Commissioner by providing evidence that addresses five key factors:

• The Honesty of Your Use: This is the threshold test. You must have adopted your mark with “commercial honesty”. We must provide an explanation of how you came up with your mark to prove it was not copied from the cited mark. Use that begins with knowledge of the other mark, or is done surreptitiously, will fail this test.
• The Extent of Your Use: We must quantify your use in New Zealand before your application’s filing date. This includes providing annual sales/turnover figures, annual advertising and promotional expenses, and information on the geographical extent of your use. The more significant your use, the stronger your case.
• The Degree of Likely Confusion: We will analyze the similarity of the marks and goods. The more distinctive the marks, the less likely there is to be confusion, which strengthens your position.
• Evidence of Actual Confusion: A lack of confusion is powerful evidence. We will ask you to provide a statement on whether you are aware of any actual instances of customers being confused between your brand and the cited brand. Proving a long period of co-existence without confusion is a very strong argument.
• The Relative Inconvenience: We will make the argument that refusing your application would cause significant commercial inconvenience to you, including the loss of established goodwill and the high cost of rebranding.

Arguing “Other Special Circumstances” (Section 26(b))

Section 26(b) also allows for registration based on “other special circumstances” that make it “proper” to register the mark. This is a flexible legal argument that we can use in specific situations.

The most powerful “special circumstance” is prior rights. We can use your own trade mark portfolio as a shield. For example, if you have an earlier registered trade mark that is the same as (or very similar to) your new application, we can use that prior right to overcome the citation that was filed in the interim. This is a complex but highly effective strategy, and we will assess if your portfolio meets the specific criteria for this argument.

Other special circumstances may include proving that your use of the mark in New Zealand pre-dates the filing date of the cited mark.

Strategic Negotiation of Your Specification

Often, the most commercially efficient solution is not to fight the citation, but to avoid it. We can do this by strategically amending the specification of goods and services in your application.

This involves “carving out” the specific area of conflict. We have three main ways to do this:

• Deletion: If your application covers a broad list of goods (e.g., “Games, gymnastic articles, and sporting articles”) and the citation is only for “Games,” we can simply delete “Games” from your specification. Your application can then proceed for the remaining, non-conflicting goods.
• Positive Limitation: We can narrow a broad term to make it more precise and avoid the conflict. For example, if your specification for “Computer software” is cited against a mark for “Computer game software,” we can amend your specification to “Computer software for use in the energy sector.” This creates a clear distinction.
• Exclusion: We can add a negative exclusion, such as “but not including…” For instance, if your application for “Cycles” is cited against a mark for “Motor vehicles,” we can amend your specification to “Cycles, but not including motorized cycles”.

Using exclusions is highly technical. IPONZ will not accept an exclusion if it still leads to confusion. More importantly, you cannot exclude goods that were not covered by your specification in the first place. For example, amending “Clothing” to “Clothing, but not including shoes” is an invalid amendment, as “shoes” were not included in the first place. This is a common error that our firm will ensure you avoid.

Why work with us?

A citation under Section 25 is a complex legal challenge, but it is one that comes with a well-defined set of solutions. Your brand is worth defending. We will analyze the citation, discuss the commercial realities of your brand, and develop the most effective, strategic, and cost-efficient pathway to get your trade mark registered. Contact our team today for a free consultation.