Revoking/Invalidating a Trade Mark Registration

Anyone aggrieved by the existence of someone else’s trade mark registration can file an application at IPONZ asking that the trade mark registration is removed from the Register, is invalidated and/or is amended.

People often seek to revoke an existing trade mark registration if it is cited by an IPONZ examiner as preventing their trade mark from being registered.

The most common grounds for seeking to invalidate a trade mark registration are:

• The trade mark has not been used during the last three years.
• The trade mark has become deceptive or no longer functions as a trade mark.
• The trade mark owner was not entitled to own the mark (e.g. the trade mark application was filed in bad faith).
• Use of the trade mark is in breach of the Fair Trading Act or some other law.

If the trade mark owner does not respond to the Application for Revocation/Invalidity by filing a Counterstatement, then the trade mark registration is revoked.

If a Counterstatement is filed then both the trade mark owner and the party trying to revoke the mark can file evidence at IPONZ supporting their respective arguments, and the issue is then decided by an IPONZ Hearings Officer.

For further information, costs estimates and advice with a revocation action or an invalidity proceeding, a trade mark specialist will contact you by [clicking here]