Received A Trade Mark Adverse Report From the Intellectual Property Office of New Zealand? Here Are Your Options

Registering your trade mark is a great way to protect and distinguish your brand’s valuable intellectual property.

At Sprintlaw, we guide our clients through the pre-application process before they register a trade mark. This preliminary step is crucial in New Zealand’s trade mark application process, as it helps to identify and address any potential issues with your trade mark.

Receiving a Compliance Report from the Intellectual Property Office of New Zealand (IPONZ) can be concerning, as it means that IPONZ has identified problems with your trade mark. It means you may need to consider altering your trade mark or, in the worst case, completely rebranding.

Our Trade Mark Compliance Report Consult gives you the opportunity to discuss your Compliance Report with our IP specialist lawyer to obtain advice on your options moving forward.

Understanding The Pre-Application Process

There are two parts to the pre-application process: the initial search and the application itself.

Initial Search

The first step is to conduct a thorough search of existing trade marks to ensure your proposed trade mark is unique. This can be done using the search tools provided by IPONZ.

Upon identifying any potential conflicts or issues, you can then decide whether to proceed with the application or make necessary changes to your trade mark.

Formal Application

The next step involves filing the formal trade mark application with IPONZ. The examination process by IPONZ usually takes up to 15 working days. If your trade mark is “accepted”, it will enter into an opposition period for three months, during which other parties can oppose your trade mark.

If there are no oppositions during the opposition period, your trade mark will be successfully registered. The right to your trade mark registration starts from the application filing date.

What Is In A Compliance Report?

A Compliance Report will set out the reasons why your trade mark is likely not to be accepted by IPONZ during the formal application, and what you can do to fix it.

Your options are usually:

• Amend your application. This may involve submitting a new representation of your trade mark, which allows you to address the issues raised in the Compliance Report. An experienced trade mark lawyer can suggest ways that you can increase the likelihood of your application being successful.
• Proceed with the formal application. A Compliance Report is an initial indication of any problems your trade mark may encounter during the formal application process, and is not a definitive result. You may still decide to go ahead with the application despite the problems identified.
• Withdraw your application altogether. You may decide that, in light of the Compliance Report, you’d rather consider rebranding (particularly if it turns out your proposed trade mark isn’t as original as you thought!).

Need Help Deciding Your Next Steps?

If you’ve received a Compliance Report, discussing your options and obtaining legal advice on what you should do to increase the likelihood of your trade mark succeeding may be the difference between securing your prized brand name or logo and losing it.

At Sprintlaw, we have an experienced trade mark team who can talk you through what your next steps should be. Feel free to get in touch to book in a consult! Call us on 0800 002 184.

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