Trademark Opposition Procedure in New Zealand
Any party who believes that a published trademark may adversely affect their business interests can oppose its registration through a formal process administered by the Intellectual Property Office of New Zealand (IPONZ).
- Notice of Opposition: The notice must be filed within three months from the date the trademark is advertised in the journal.
Extensions
- One-month extension:Available without the applicant’s consent.Additional two-month extension:Requires the applicant’s consent.Maximum extension:Up to three months total if both options are used.
- Counterstatement by Applicant: Once the opposition is filed, IPONZ notifies the applicant and provides a copy of the notice. The applicant has two months to file a counterstatement to defend the application. Failure to respond results in abandonment of the trademark application.
- Opponent’s Evidence: Upon receiving the counterstatement, the opponent has two months to:
- Submit evidence in support of the opposition, or
- Notify IPONZ of their intent not to file evidence or to withdraw the opposition.
- In case, the Opponent files the evidences, they must be submitted as a statutory declaration or affidavit. Improperly formatted evidence will be rejected.
- Applicant’s Evidence: The applicant may submit evidence supporting their counterstatement within two months of receiving the opponent’s evidence (or notice of non-submission). Evidence must also be in the form of a statutory declaration or affidavit to be accepted.
- Opponent’s Reply Evidence: If the applicant files evidence, the opponent may submit reply evidence within one month of receiving it. No reply evidence is permitted if the applicant does not file any evidence.
- Hearing: After the evidence stages conclude, IPONZ will ask both parties how they wish to be heard:
- In person
- By written submissions
- On the papers filed
- Decision
- The Assistant Commissioner will issue a written decision, including any award of costs.
- Decisions are typically delivered within 30 working days of the hearing.
- Both parties receive the decision via the IPONZ case management system.
- Appeal: Parties may appeal the decision within 20 working days by:
- Filing a notice of appeal and application for stay of proceedings in the High Court.
- Notifying the Commissioner.
- If no appeal is filed, the decision becomes final, and IPONZ will update the trademark register accordingly.