IPONZ practice change – accepting applications on the basis of prior continuous use

Under New Zealand law, the true owner of a trade mark is the first person to use or register the trade mark. During the examination of an application, examiners at the Intellectual Property Office of New Zealand (“IPONZ”) will raise an objection if there is a prior registration for the same or similar trade mark. IPONZ has recently clarified its practice for a trade mark applicant to overcome such an objection on evidence that it has used its trade mark from a date earlier than the priority date of a cited application or registration.

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The approach taken by examiners now is described below:

“The owner of an application facing a citation under section 25 may provide submissions and evidence of use of its mark in New Zealand prior to the date the cited mark was filed (or applicable convention priority date). Examiners will consider such submissions and evidence in determining whether “special circumstances” exist for the purposes of section 26(b).

Prior use may be one of the various factors which examiners may take into consideration when determining whether special circumstances exist under section 26(b), but prior use on its own may not amount to a special circumstance. Each case will be considered on its merits.”

This has been a contentious issue between practitioners and IPONZ examiners for some years. Most practitioners are of the view that New Zealand’s legislation and case law support the acceptance of an application where there is evidence that the mark in question has been used continuously from a date earlier than the priority date of any cited application or registration. However, there has been a reluctance amongst IPONZ examiners to accept applications on this basis under the “special circumstances” provision in section 26(b) of our Trade Marks Act.

Australia’s Trade Marks Act expressly provides that the Registrar may not reject an application if the Registrar is satisfied that the applicant has continuously used its mark from a date earlier than the priority date for a cited registration. A practice has evolved in Australia whereby owners of cited registrations are notified if an application is accepted notwithstanding their prior rights. We understand that IPONZ would prefer New Zealand’s legislation to be amended to follow the Australian approach. However, New Zealand’s Government does not appear to be giving any priority to intellectual property legislation at the moment. So, as an interim measure, IPONZ has amended its practice guidelines to indicate to applicants that evidence of prior continuous use will be taken into consideration on a case-by-case basis.

We welcome this change in practice as we consider that it is in line with the legal framework of who is the rightful owner of a trade mark.

David Moore - October 2022

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