Trademark Rectification in New Zealand

Maintaining an accurate Intellectual Property Register is fundamental to the integrity of the commercial landscape in New Zealand. However, errors and omissions can occur, whether through administrative oversight, clerical mistakes, or more complex procedural missteps during the lifecycle of a trademark. The Trade Marks Act 2002 provides a specific remedy for these situations: the Application for Rectification.

Scope and Limitations

Rectification is a precise legal tool found under section 76 of the Act. It allows any person with an interest to apply to the Commissioner or the Court to correct an “error” or “omission” in the register. If the application is successful, the error is treated as if it never existed, effectively rewriting the history of the mark to align with the facts.

It is crucial for applicants to understand what rectification is not. It is not intended for general amendment requests that a trademark owner might wish to make to their own file; those are handled under separate sections of the Act (sections 37 or 78). Furthermore, and perhaps most importantly, rectification cannot be used to attack the validity of a trademark registration. If the goal is to argue that a mark should never have been registered in the first place, or that it should be removed for non-use, the correct procedures are Invalidity or Revocation, not Rectification.

The distinction is vital because the Commissioner has confirmed that rectification is a residual remedy. It is only available where another purpose-made section of the Act does not cover the relief being sought. Attempts to “dress up” invalidity or revocation actions as rectification applications will likely be rejected to prevent subverting the standard tenets of trademark law.

Defining “Error or Omission”

Historically, there was a misconception that rectification was reserved solely for minor clerical slip-ups. However, the scope is broader. Intellectual Property Office of New Zealand (IPONZ) practice, supported by case law such as Harkness & Young Limited v Hartman Pacific Pty Limited and Besco Batteries NZ Ltd v Century Batteries Ltd, establishes that rectification can extend to matters more substantial than simple clerical errors. For instance, it has been used to address serious issues such as the fraudulent assignment of trademarks by an employee.

Pre-Action Strategy

Before a formal legal application is lodged, there is a critical strategic phase that should not be overlooked. IPONZ strongly recommends that a party considering an application contact the trademark owner directly to discuss their concerns.

We advise our clients to pursue this avenue first for several reasons. Often, the error in the register is unintentional, and the owner may be willing to cooperate to resolve the matter without litigation. More importantly, failing to attempt an amicable resolution can have financial consequences. If you proceed directly to formal proceedings without trying to resolve the issue privately, it may negatively impact the costs awarded to you by the Commissioner, even if you successfully win the case. We can facilitate these initial discussions on your behalf to ensure your interests are protected while satisfying procedural expectations.

Who Can Apply?

Unlike some legal actions that require a party to be “aggrieved,” the threshold for rectification is slightly lower. An application can be made by any “person who has an interest”.

This term is given a liberal and wide interpretation. It does not necessarily require the applicant to be a direct competitor or to be suffering commercial damage. A person with an interest could be the trademark owner themselves, or a person with a significant business relationship with the owner. When filing the application, the applicant must include a statement outlining the basis on which they claim to be a person with an interest, and this status must be proven on the balance of probabilities.

The Procedural Pathway

The rectification process is a structured litigation proceeding managed by IPONZ. It follows a strict timeline designed to ensure fairness to both the applicant and the trademark owner.

• Filing the Application

The process begins with the filing of a formal application. This document, known as the pleadings, must be in writing and signed. It must clearly specify the trademark registration number, the classes of goods or services involved, and the extent to which rectification is sought. That said, the pleadings must accurately and fully set out the grounds for rectification and reference the specific sections of the Act relied upon. Vague pleadings run the risk of not being admitted by IPONZ.

• The Counterstatement (The Defense)

Once the application is processed, IPONZ notifies the trademark owner, who then has two months to file a counterstatement. This document acts as the defense. Its purpose is to clarify exactly which assertions in the application the owner admits, denies, or claims no knowledge of.

This stage is critical for the trademark owner. If a valid counterstatement is not filed by the deadline, the owner is treated as playing no further part in the proceedings. In such a scenario, the Commissioner will determine the outcome based solely on the documents filed by the applicant, often leading to the rectification being granted by default.

• The Evidence Stages

If the owner defends the mark, the proceeding moves into the evidence phase. This is where the factual case is built.

The applicant has two months from the receipt of the counterstatement to file evidence supporting their claim. This must be in the form of a statutory declaration or affidavit. That said, the applicant must serve a copy on the owner, i.e. simply uploading it to the IPONZ case management system does not constitute service. Whereas the owner then has two months to file evidence in support of their registration. And finally, the applicant has one month to file evidence “strictly in reply” to the owner’s evidence. This is not an opportunity to raise new issues but serves only to rebut the owner’s specific points.

The evidential burden lies with the applicant. They must prove, on the balance of probabilities, that the error or omission exists and that the register requires correction.

The Hearing and Decision

Once the evidence is complete, the matter proceeds to a hearing. The parties can elect how they wish the case to be decided.

The Assistant Commissioner makes a decision based on the filed documents without a fee or further argument, parties file formal legal arguments for a fee, which the Commissioner considers alongside the evidence and then, a formal hearing is held (usually in Wellington, though video links or other venues are possible), allowing counsel to present oral arguments.

Following the hearing, the Assistant Commissioner issues a written decision, typically within 30 working days. This decision will determine whether the register is rectified and will usually include an award of costs to the successful party.

International Considerations and Appeals

For businesses operating globally, it is important to note that this process applies similarly to International Registrations protected in New Zealand. If a rectification application against an International Registrations protected in New Zealand is successful, IPONZ is required to notify the World Intellectual Property Organization (WIPO) of the change, ensuring the international register reflects the correction made in New Zealand.

That said, the Assistant Commissioner’s decision is not necessarily the end of the road. Any party dissatisfied with the outcome may appeal to the High Court. This must be done within 20 working days of the decision. If no appeal is filed, the Commissioner alters the register to give effect to the decision, and the matter is concluded.

How Can We Help?

Rectifying a trademark register involves more than just pointing out a mistake. It is a quasi-judicial process with strict deadlines, formal pleading requirements, and complex rules of evidence. Whether you are an applicant seeking to correct a damaging error or an owner defending your registration against a third-party attack, you need a partner who understands the nuances of New Zealand trademark law.

We are here to guide you through every step, i.e. from the initial amicable approach and drafting precise pleadings to compiling effective evidence and representing your interests at the hearing. Ensuring the register is accurate protects your rights and clarifies your commercial boundaries. Let us help you set the record straight.

Contact us today for a free consultation.