What To Do If You Receive a Trade Mark Compliance Report from IPONZ?
Receiving a trade mark compliance report from the Intellectual Property Office of New Zealand (IPONZ) can feel overwhelming and frustrating, but it’s important to remember that it doesn’t mean your application is doomed. This guide provides practical advice to help you navigate the process and what you can do to overcome the objections.
Understanding IPONZ Compliance Reports
After you file your trade mark application with IPONZ, an examiner reviews it to ensure it meets the requirements under the Trade Marks Act 2002 (NZ). As of 12 January 2025, IPONZ is taking about 70 working days to examine new applications (See, IPONZ Examination Time Frames). If the examiner identifies any issues, they will issue a compliance report outlining the objections to your application.
Common objections raised in a compliance report include:
- Descriptiveness: Your mark is descriptive of the goods or services you’re offering. For instance, a descriptive mark like ‘Pure Soap’ for soap products may face objections for lack of distinctiveness.
- Lack of distinctiveness: Your mark is in common use by other traders.
- Conflict with an existing trade mark: Your mark is too similar to one already on the Trade Marks Register.
- Incorrect classification or specification of goods and/or services: The claimed goods and/or services are too broad or unclear or incorrectly classified.
How Long Do You Have to Respond to an IPONZ Compliance Report?
IPONZ typically allows 12 months from the date a compliance report is issued to address objections. While extensions of time are possible, they are granted sparingly compared to jurisdictions like Australia. Acting promptly and strategically is critical to keeping your application on track and avoiding delays.
How to Respond to IPONZ Compliance Reports?
Here’s how you can address a compliance report:
- Understand the Objections:
- Seek Expert Advice:
- Respond Strategically:
- Provide evidence to show your trade mark is distinctive (e.g., proof of use and reputation).
- Amend your application (e.g., narrow your claimed goods or services).
- Argue that your trade mark doesn’t conflict with existing registrations.
- Negotiate a letter of consent from the owner of a conflicting trade mark.
Begin by carefully reviewing the examiner’s objections to identify the specific reasons your application was flagged. This clarity will help determine your next steps.
Trade mark law is nuanced. Engaging a trade mark attorney early can save time and increase the likelihood of success. They can provide tailored advice on overcoming objections.
At Halfords IP, we operate across Australia and New Zealand. Speak to us as soon as you receive the compliance report. We will provide an indication of your prospects for success and recommend the best path forward.
Depending on the objections, you might:
Why Work with Halfords IP?
Dealing with a compliance report requires expertise, strategy, and precision. At Halfords IP, we specialize in helping clients overcome trade mark objections, with decades of experience navigating IPONZ’s processes.
When you work with us, you can expect:
- Clear advice and recommendations: We give clear advice on your options and likelihood of success. We give you a direction, not just a list of possible options.
- Efficient Communication: We liaise with IPONZ on your behalf, ensuring your case is presented persuasively.
- Strategic Planning: Guidance on amendments, evidence, or negotiation strategies to resolve conflicts.
Don’t Let a Compliance Report Hold You Back!
Receiving a compliance report is a bump in the road, not the end of it. With the right support, many applications overcome objections and proceed to registration.
If you’ve received a compliance report or have questions about the process, contact Aparna Watal.
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