Trade Mark Examination Process in New Zealand

Once an application is filed and secures a priority date, it enters the critical phase that determines its success or failure, i.e. examination. This is a formal, rigorous process where an examiner at the Intellectual Property Office of New Zealand (IPONZ) scrutinizes every aspect of the application to ensure it complies with the Trade Marks Act 2002.

The Examiner’s Comprehensive Review

Under section 39 of the Act, the Commissioner is obligated to examine every application to determine if it complies with the law. This comprehensive review covers several key areas. The examiner will verify that all mandatory filing requirements have been met, that any convention priority claims are valid, that all prescribed fees have been paid, and that the application meets all mandatory requirements for final acceptance.

The most significant part of this review, however, is the assessment for “absolute” and “relative” grounds for not registering the mark.

Absolute Grounds (Sections 17-21)- These objections relate to the trade mark itself. The examiner will assess whether the mark is sufficiently distinctive to function as a trade mark. For example, is it a generic term or a purely descriptive word that other traders should be free to use? Does it conflict with public policy?

Relative Grounds (Sections 22-30)- These objections relate to the mark’s conflict with the rights of other traders. The examiner will conduct searches to see if your mark is identical or confusingly similar to an earlier-filed trade mark application or registration held by another party.

Our initial pre-filing analysis is designed to identify these potential absolute and relative grounds issues before an application is ever filed. However, when an examiner does raise an objection, our team is equipped with the legal expertise to prepare and file detailed submissions, evidence of use, or strategic amendments to overcome it.

The examination also involves special scrutiny for particular types of marks. For example, an application for a series of trade marks must fit the precise legal definition set out in section 5 of the Act. Applications for collective trade marks or certification trade marks must comply with a range of additional requirements and are subject to a higher level of review.

Furthermore, all applications are assessed to determine if they contain or are derived from Māori text or imagery. If a Māori sign is identified, the application is forwarded to the Māori Trade Marks Advisory Committee for advice before examination proceeds. We manage this consultation process and respond to any issues that may arise.

Mandatory Acceptance Requirements

While an application secures a filing date by meeting a basic set of requirements, it cannot be accepted for registration until a second, more detailed set of mandatory requirements is met. These technical details are often overlooked by applicants but are a critical part of the examiner’s checklist.

As your registered agent, we manage all of these details seamlessly. This includes providing a valid address for service in New Zealand or Australia, as required by the regulations. We also ensure the application correctly specifies the goods and services into their respective classes under the Nice Classification system (Classes 1-34 for goods, 35-45 for services).

That said, an application cannot be accepted without a positive statement that the trade mark is either currently in use or proposed to be used in New Zealand. We ensure this formal declaration is correctly made on your behalf as part of the application process.

If your mark contains foreign words or characters, the examiner will require a translation and, where necessary, a transliteration before the mark can be accepted. Our firm handles this proactively, providing this information at the time of filing to prevent avoidable objections and delays.

Conditions and Limitations

Often, an application can only proceed to acceptance if the applicant agrees to certain conditions or limitations being entered on the register. This is a highly technical area of the examination process where legal strategy is paramount.

Colour Limitations, i.e. a trade mark filed in black and white is not limited as to colour. However, if colour is a key feature of your brand, we can strategically limit the mark to those specific colours. In some cases, an examiner may require a colour limitation to overcome an objection. If a mark is not inherently distinctive, the addition of specific colours may be what allows it to be registered. In these instances, the Commissioner will require the colours to be described using a precise standard, such as the Pantone® colour system. We manage this negotiation to ensure the limitation provides protection while satisfying the examiner’s concerns.

Non-Traditional Marks, i.e. registering marks like colours or 3D shapes involves a high burden of proof. For a colour mark, the applicant must provide not only a representation and a Pantone® code, but also a description of how the colour is used (e.g., “applied to the exterior surface of the goods”). For a 3D shape, a simple picture is not enough. We prepare the required written description that distinguishes the mark from a 2D symbol and can craft a description that claims the shape only , the shape with a device , or the shape with specific words appearing on it.

Variation Clauses, i.e. this issue arises when a trade mark itself contains a description of a specific good (e.g., “PALLISER’S BLACKCURRANT JELLY”), but the application covers a wider range of goods (e.g., “jellies, jams and preserves”). An examiner will object, but the application can be saved if the applicant provides a formal “undertaking” that the mark will be varied in use. For instance, we would file an undertaking that when the mark is used on strawberry jam, the words “blackcurrant jelly” will be substituted with “strawberry jam”.

Blank Space Conditions, i.e. If your mark is a label with a blank space, the Commissioner must be satisfied as to what will be added to that space in trade. The concern is that an owner could add matter that would not have been registrable on its own. A standard condition is often imposed, stating that the blank space may only be occupied by “matter of a wholly descriptive non-trade mark character”. However, our expertise allows us to argue for more flexible conditions based on legal precedent, such as the condition in the famous TIME Trade Mark case, which allows the space to be filled with matter that has “no trade mark significance” in relation to the goods , or even a condition that allows for the insertion of your other registered trade marks.

The Examination Report

If the examiner finds that an application does not comply with the Act, the Commissioner must inform the applicant and provide an opportunity to respond. This is done by issuing a formal Compliance Report.

This report details every objection, from technical errors to major absolute or relative grounds refusals. A deadline is set, which is typically 12 months from the application’s New Zealand filing date. (An exception is made for applications referred to the Māori Advisory Committee, which are given 12 months from the date the report is issued).

Receiving a Compliance Report is a normal part of the process, and it is where our work truly begins. We analyze the report, develop a legal strategy, and prepare a formal response. This may involve-

• Presenting legal arguments to counter the examiner’s objection.
• Amending the application, for example, by limiting the specification of goods.
• Filing evidence of use to demonstrate the mark has acquired distinctiveness.
• Agreeing to conditions, such as a colour limitation or a variation clause.

Further Compliance Reports may be issued in response to our submissions, often with much shorter deadlines (e.g., two months). We manage this entire back-and-forth correspondence, ensuring every point is addressed.

Abandonment, Extensions, and Abeyance

The deadlines set in Compliance Reports are absolute. If a response is not received by the specified deadline (including any extensions), the Commissioner must treat the application as abandoned. IPONZ will send a written confirmation, but any delay in this notice does not change the abandoned status, nor is it a valid reason to reinstate the application.

Our internal docketing system is designed to ensure these critical deadlines are never missed. If a response cannot be prepared in time, we will file a formal request for an extension of time. This request must be filed before the deadline expires and must include reasons for the request.

In some strategic situations, the best response is to pause the application. This is known as placing the application in abeyance. This is a crucial tool when, for example, your application is blocked by a prior mark that your company is actively trying to cancel. Under Section 44(2), an application cannot be treated as abandoned if it is awaiting the outcome of opposition, cancellation, or invalidity proceedings against a prior registration. We must formally advise IPONZ of this fact in writing before the deadline to activate the abeyance. We can also request an application be placed in abeyance for other legal challenges, pending the Commissioner’s approval.

Impasse and Rejection

If, after multiple responses, the examiner maintains the objections and no further progress can be made, the application is considered to have reached an impasse. The examiner will issue a report indicating this and warn that if a further response does not overcome the objections, the Office will consider rejecting the application.

If the applicant still fails to satisfy the Commissioner, the Commissioner must reject the application under Section 43. This is not, however, the end of the road. Before this happens, the Commissioner must give the applicant an opportunity to be heard.

A Notice of Intention to Reject will be issued. This notice gives the applicant one month to request a formal hearing on the matter. This is a critical, time-sensitive deadline. At this stage, extensions of time are only granted for “genuine and exceptional reasons”, simply needing more time to get instructions is not considered an exceptional reason.

An application that successfully navigates all these requirements will be accepted, subject to a final opposition period. The examination process is a legal proceeding, and navigating it successfully requires diligence, technical knowledge, and strong legal acumen. Our firm provides that expertise at every step. Contact us today for a free consultation.