International companies doing business in New Zealand should take prompt action and appropriate measures to protect their trademarks and brand names. The risks of not doing so are costly, particularly when the trademarks are profitable. This is also true for failure to file a trademark opposition.
Risks of Not Filing Trademark Opposition
Trademark protection is there for a reason: It provides protection from authorized use of trademarks, particularly when used illegally or commercially. Without it, anybody can use your trademark to their advantage and your disadvantage.
You may, for example, find it impossible to challenge the use of a registered mark even when you have used it for several years. If the third party contends that the he has also been using the registered mark in New Zealand, you will have a fight on your hands.
Keep in mind that trademark disputes in New Zealand are usually decided on a priority basis. This means that the first to register and/or use of the mark will win in the dispute. If you failed to register your mark, it’s on you, so to speak.
There’s also the matter of the difficulty in getting sufficient and valid evidence of use of the mark. In New Zealand, the evidence of use should also be genuine as well as exceed “mere use” in establishing goodwill or reputation. The opposition can be further muddled by the subsequent use by a different entity of the same or similar trademark.
The bottom line: You should aim for early registration of your international trademark in New Zealand. Prompt action will mean absolute use and defense against any and all trademark infringements.
Requirements for Filing a Trademark Opposition
Let’s assume that you’re planning on filing a trademark opposition in New Zealand. You should ideally hire a trademark expert from the first stage since the rules and regulations can be confusing. You can also let said expert take care of the nitty-gritty details while you focus on other things.
First off, the New Zealand Government has four broad types of proceedings related to trademark disputes.
- Opposition proceedings involve the prevention of registration of a proposed trademark with the Commissioner of Trade Marks presiding.
- Invalidity proceedings involve the invalidation of an existing registered trademark, and it’s done either before the Commissioner of Trade Marks or the High Court.
- Revocation proceedings involve the request for removal of trademarks for their non-use.
- Infringement proceedings are conducted in the High Court and involves disputes regarding a registered trademark.
Take note that there are actually no standing requirements for filing oppositions of trademark. But there are plenty of grounds for opposition, such as possible confusion or deceit in the use of the mark, false claim to ownership, and bad faith in filing the application.
Did you find the information useful? If so, continue reading our posts.
CtR Intellectual Property Co.
Hong Kong Patent Application Grant Authorised Patent Agent
Offering Professional Patent and Trademark Application & Related Services