Trademark Oppositions in New Zealand

Securing a trademark is often a smooth administrative process, but it doesn’t always go unchallenged. In the world of intellectual property, the publication of a trademark application acts as a signal to the market. It invites existing rights holders to scrutinize the new mark and, if necessary, intervene to protect their own brands. This intervention is known as an “opposition”.

Advertisement and the Cooling-Off Period

The opposition lifecycle begins the moment an accepted trademark application is advertised in the IPONZ Journal. This advertisement serves as public notice. From this date, any person who believes the mark should not be registered has a window of three months to file a formal notice of opposition.

However, launching a legal battle shouldn’t necessarily be your first move. IPONZ strongly recommends that potential opponents contact the trademark applicant directly before filing formal papers. The goal is to see if the matter can be resolved amicably, perhaps through a coexistence agreement or a limitation of goods, i.e. without the need for a formal hearing.

This initial dialogue is more than just a courtesy, i.e. it has strategic value. If you proceed to litigation without attempting to resolve the issue privately first, it may negatively impact the costs awarded to you later, even if you win the case. The three-month window is designed to provide ample time for these negotiations to take place.

Securing more time

Realistically, three months isn’t always enough to investigate a conflict or conclude settlement talks. Fortunately, the regulations allow for flexibility. If you are a potential opponent, you can apply to extend the deadline for filing your opposition.

One can request a one-month extension without needing the applicant’s permission. If the applicant agrees to give you more time, you can secure a two-month extension. It is important to note that these extensions are capped, i.e. the maximum additional time available is three months if both options are utilized.

For international registrations (NZDs), securing this time is critical. A delay in advising the International Bureau that an opposition is underway can result in a “non-correctable irregularity”, which could effectively kill your chance to oppose the mark entirely. Therefore, obtaining an extension is a procedural safety net, keeping the door open for opposition while you finalize your strategy.

Filing the Notice of Opposition

If negotiations fail, the opponent must file a “Notice of Opposition”. This document, often called the pleadings, outlines exactly why the trademark should not be registered.

An opposition doesn’t have to be an all-or-nothing attack. An opponent can file a “partial opposition”, challenging the trademark only regarding specific goods or services that cause concern, while letting the rest proceed. For instance, if a mark covers both clothing and software, and you only have rights in clothing, you might limit your opposition to that specific class.

The notice must be precise. You are required to clearly set out the grounds you are relying on and reference the specific sections of the Trade Marks Act 2002. If the pleadings are vague, IPONZ may refuse to accept the notice.

Common grounds for opposition include claims that the applicant is not the true owner of the mark, or that the mark is likely to deceive or cause confusion in the marketplace. You might argue that the application was made in bad faith, or that the mark itself is non-distinctive or merely descriptive of the goods. A frequent ground for opposition involves section 25 of the Act, where the new mark is alleged to be identical or similar to an opponent’s earlier registered trademark for similar goods, creating a likelihood of deception.

The Counterstatement

Once the Notice of Opposition is filed, the ball moves to the applicant’s court. IPONZ will send the applicant a copy of the notice, triggering a strict two-month deadline. To keep their application alive, the applicant must file a “counterstatement”.

This document is the applicant’s formal defense. Its purpose is to clarify exactly which claims are in dispute. The applicant must go through the opponent’s notice and admit, deny, or claim a lack of knowledge regarding each assertion. This helps narrow the focus of the proceedings so that both parties only spend time and money arguing over points that are actually contested.

This is a high-stakes deadline. If the applicant fails to file a valid counterstatement within the two months, the consequences are fatal to the application, i.e. a national trademark application will be deemed abandoned, and an International Registration will be deemed withdrawn for the opposed classes.

The Evidence Stages

Once the pleadings, the Notice of Opposition and the Counterstatement, are settled, the proceeding enters the evidence phase. This is where the factual arguments are built. The process is sequential and strictly timed.

• The Opponent’s Evidence

The opponent goes first. From the moment they receive the counterstatement, they have two months to file evidence supporting their case. This evidence must take the form of a statutory declaration or affidavit; i.e. informal letters or unsworn statements are not admissible. That said, simply uploading the evidence to IPONZ isn’t enough, the opponent must also serve a copy on the applicant. If the opponent fails to file evidence or withdraw the opposition by the deadline, the proceeding is discontinued, and the trademark will proceed to registration.

• The Applicant’s Evidence

After receiving the opponent’s evidence, the applicant has two months to respond with their own evidence. Like the opponent, they must use statutory declarations or affidavits and must serve copies on the other side. This is the applicant’s chance to prove their prior use, distinctiveness, or lack of bad faith. If the applicant chooses not to file evidence, the evidential stage concludes, and the case moves directly to a hearing.

• Evidence Strictly in Reply

The opponent gets the final word, but with a caveat. If the applicant filed evidence, the opponent has one month to file evidence “strictly in reply”. This is not an opportunity to introduce new arguments that should have been raised earlier, i.e. it is solely to rebut the specific points raised in the applicant’s evidence. If the applicant filed no evidence, there is nothing to reply to, and this stage is skipped.

Hearing and Decision

When the evidence rounds are complete, the IPONZ hearings office will ask both parties how they wish the matter to be decided. Parties generally have three options.

First, they can request a decision “on the papers”. This involves no hearing fee and requires no further action; the Assistant Commissioner simply reviews the documents already filed and makes a decision.

Second, parties can elect to file written submissions. This incurs a hearing fee and allows the parties to submit a final written legal argument summarizing their case before the Commissioner reviews the file.

Third, parties can request an appearance hearing. This is a formal hearing, typically held in Wellington, though requests for Christchurch, Auckland, or video links are considered. This option requires a hearing fee and allows counsel to present oral arguments directly to the Assistant Commissioner.

Following the hearing or review, the Assistant Commissioner issues a formal written decision, usually within 30 working days. This decision will determine whether the trademark is registered or refused and will typically include an award of costs to the successful party.

Appeals and Finality

The decision of the Assistant Commissioner is significant, but it is not necessarily the end of the road. If a party believes the decision is incorrect, they have the right to appeal to the High Court. This appeal must be filed within 20 working days of the decision. If no appeal is lodged, the Commissioner’s decision becomes final, and the trademark register is updated to reflect the outcome.

Trademark opposition in New Zealand is a rigorous process designed to balance the rights of new applicants with those of existing market players. Whether you are protecting a legacy brand or fighting to launch a new one, success relies on strict adherence to these timelines and a clear, evidenced-based strategy.

Contact us today for a free consultation.