Revocation of Trademark Registrations in New Zealand

A trademark registration in New Zealand requires maintenance and genuine activity to remain valid. When a registered mark clogs the register without being used, or when it becomes deceptive or generic, it blocks legitimate businesses from entering the market. The Intellectual Property Office of New Zealand (IPONZ) provides a mechanism to clear these obstacles through the revocation process. Revocation is a legal procedure where a third party applies to remove a registered national trademark or an International Registration protecting New Zealand (IRPNZ) from the register.

Who is eligible to apply?

The revocation process is not open to the general public at large, but it is reserved for those who have a specific stake in the matter. To file an application, a party must demonstrate that they are an “aggrieved person”. This is a critical legal threshold. The onus falls entirely on the applicant to prove that they are aggrieved as of the date they file their application.

While this sounds restrictive, New Zealand law generally applies a liberal interpretation to the term “aggrieved person” to maintain the integrity of the public register. To qualify, an applicant must show they are appreciably disadvantaged in a legal or practical sense by the continued presence of the mark on the register.

Common scenarios that establish this status include situations where the registered mark is blocking the acceptance of the applicant’s own trademark application, or where the applicant operates in the same trade and their business is hindered by the registration. It also covers instances where the trademark owner has alleged that the applicant is infringing their rights, or where the applicant has a real or substantive interest in removing the mark.

Grounds for Revocation

A revocation application must be based on specific statutory grounds. These generally fall into two categories: non-use and grounds other than non-use.

The most frequent ground is non-use. An applicant can request revocation if the trademark has not been put to genuine use in the course of trade in New Zealand for a continuous period of three years or more. This three-year clock must start after the actual date of registration and end at least one month before the revocation application is filed.

Apart from non-use, a mark can be revoked if it has become a common name or generic term for the product or service it represents due to the owner’s acts or inactivity. Similarly, a mark may be revoked if, due to the owner’s use, it is likely to deceive or confuse the public, particularly regarding the nature, quality, or geographical origin of the goods. There are also specific provisions regarding former patented articles where two years have elapsed since the patent expiry and the trademark remains the only practicable name for the article.

Filing the application

The process begins with filing a formal application for revocation. This document, known as the pleadings, must be in writing, signed, and accompanied by the prescribed fee. It must clearly specify the grounds for revocation, citing the relevant sections of the Trade Marks Act 2002.

An applicant does not need to attack the entire registration. It is possible to file for a “partial revocation”, targeting only specific classes of goods or services that are not being used or are problematic. For example, if a mark is registered for both clothing and software but is only used for clothing, a competitor could apply to revoke the software class.

Before taking this formal step, IPONZ strongly recommends contacting the trademark owner directly. Attempting to resolve the matter amicably, perhaps through a voluntary surrender of the unused classes, can save significant time and resources. Failure to attempt an amicable resolution before litigating may negatively impact any costs awarded to the successful party later in the proceedings.

Non-Use vs. Other Grounds

Once the application is filed, the procedure diverges significantly depending on whether the attack is based on non-use or other grounds. This distinction is vital for trademark owners preparing a defense.

Defending Against Non-Use

If the revocation is based on non-use, the stakes are immediately high for the trademark owner. Upon receiving the application, the owner has two months to file two distinct documents, i.e. a counterstatement and evidence of use.

The counterstatement acts as the formal defense, clarifying which assertions the owner admits or denies. Simultaneously, the owner must file evidence proving either that they have used the mark during the relevant period or that special circumstances outside their control prevented that use.

This requirement places the initial burden of proof squarely on the trademark owner. They must prove “genuine use” in the course of trade in New Zealand, i.e. token use or use in other jurisdictions is insufficient. If the owner fails to file both the counterstatement and the evidence by the deadline, they effectively forfeit the case. They will play no further part in the proceeding, and the Commissioner will determine the outcome based solely on the applicant’s documents.

Defending Against Other Grounds

If the revocation is based on grounds like genericism or deception, the process is slightly different. The owner still has two months to respond, but they are only required to file a counterstatement at this stage. They do not need to file evidence immediately. If the owner fails to file the counterstatement, they are excluded from further participation, and the applicant will be invited to file evidence to prove their case prima facie.

The Evidential Stages

Assuming the trademark owner defends the registration properly, the proceeding moves into the evidential stages. These stages are strictly timed and sequential.

Applicant’s Evidence

Once the owner has filed their defense (and initial evidence in non-use cases), the applicant typically has two months to file evidence supporting their application. This evidence must be in the form of a statutory declaration or affidavit; informal documents are not admissible. The applicant must also serve a copy of this evidence on the owner. If the applicant fails to file evidence or withdraws, the proceeding is discontinued.

Owner’s Evidence

Following the applicant’s evidence, the trademark owner is given two months to file evidence in support of their registration. This is the opportunity to rebut the applicant’s claims of deception or genericism, or to bolster the initial evidence of use provided in a non-use case. Like the applicant, the owner must serve these documents on the other party.

Evidence Strictly in Reply

The applicant is granted the final word, but it is limited in scope. If the owner filed evidence, the applicant has one month to file evidence “strictly in reply”. This round is not for introducing new arguments that should have been raised earlier but is solely for addressing points raised in the owner’s evidence. If the owner chose not to file evidence, the applicant cannot file evidence in reply.

The Hearing and Decision

Once all evidence is filed, the evidential stage concludes, and the matter proceeds to a hearing. The parties are asked to elect how they wish to be heard. There are generally three options available.

First, parties may elect to have the decision made on the papers. This involves no hearing fee, and the Assistant Commissioner makes a determination based solely on the documents already filed.

Second, parties may choose to file written submissions. This requires a hearing fee and allows the parties to submit comprehensive written legal arguments for the Commissioner to consider alongside the evidence.

Third, parties may request an appearance hearing. This is a formal in-person hearing, typically held in Wellington, though requests for Auckland, Christchurch, or video links are considered. This option requires a hearing fee and involves filing submissions prior to the hearing date.

Following the hearing or review, the Assistant Commissioner issues a formal written decision, usually within 30 working days. This decision determines whether the mark remains on the register or is removed. The decision will also typically include a ruling on costs.

Appeals and International Registrations

The decision of the Assistant Commissioner is final unless appealed. Any party dissatisfied with the outcome may appeal to the High Court within 20 working days of the decision. If no appeal is filed, the Commissioner alters the register to reflect the decision.

It is also important to note the implications for international holders. If an International Registration protecting New Zealand is revoked, IPONZ is required to notify the International Bureau of the extent of the revocation.

Revocation proceedings are thus a vital tool for maintaining a healthy trademark ecosystem. They ensure that statutory rights are reserved for those who genuinely use them and that the register remains accurate and reliable. Whether initiating a challenge to clear the way for a new brand or defending an existing asset, navigating the strict timelines and evidential requirements of the revocation process is critical for success.

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