Challenging trade mark applications

But every application can be challenged before it is registered. This gives you the opportunity to stop a competitor from registering a trade mark which could inhibit your freedom to market and sell your own wine.

This article discusses why it is important to watch out for attempts to register inappropriate trade marks, and how to take action to oppose the attempted registration.

What sort of trade marks cannot be registered?

All trade mark applications are examined by the Intellectual Property Office of New Zealand ("IPONZ") and must be refused if:

Use of the mark would be likely to deceive or cause confusion; or

The mark would legitimately be desired by others for use in relation to their own products (usually because the mark is a common term or image already in use in the industry); or

The mark is descriptive of the nature, quality, quantity, intended purpose, value, geographical origin, or other characteristics of goods; or

The mark is identical with or deceptively or confusingly similar to a mark which is already on the Register.

IPONZ is thorough in its examination of applications. However, it is always possible that applications could be accepted which may unfairly impede your business. There are two main reasons for this:

IPONZ will only search for marks which are already registered or applied for on the Register, not marks which are in use; and

IPONZ may not be aware of the significance to the wine industry of a particular term.

A recent example of an application which was successfully opposed is Application No. 815085 for the trade mark:. The registration of this mark was prevented on the basis that "South Island" is merely descriptive of the geographical origin of wine and the image of the mountain was not distinctive enough to override the inability of "South Island" to function as a trade mark.

Another example of a trade mark which was successfully opposed is Application No. 808411 for OYSTERCATCHER. Delegat's Wine Estate Limited blocked the registration of OYSTERCATCHER for wine on the strength of its reputation in and prior registrations for OYSTER BAY. The Commissioner of Trade Marks considered that "if the applicant were to use the opposed mark, it is likely that a substantial number of persons in the relevant market would be deceived or confused".

Checking for offending applications

Every month, IPONZ publishes – online – a Journal which includes all new trade mark applications which have been accepted that month: http://www.iponz.govt.nz/cms/iponz/the-journal.

An alternative to scrolling through the Journal each month is to set yourself a reminder to conduct some searches every one to two months on the IPONZ database. You could search for all new applications in Class 33 – the class for wine and alcoholic beverages. Or you could search by the name of key competitors to see what new applications they have been filing.

How can you oppose an offending application?

If you become aware of an application for a mark that conflicts with your interests, you will have a narrow window of opportunity to oppose it and potentially prevent it from becoming registered: three months from the date of publication in the Journal.

The starting point is to file at IPONZ a Notice of Opposition which sets out the grounds on which you oppose the offending mark.

By filing the opposition, you will trigger a deadline for the other side to file a Counterstatement. If the other side doesn't file a Counterstatement, its application will automatically be struck off.

If the other party defends the opposition, both of you will have the opportunity to file evidence. Once all evidence has been filed, the matter is set down for a Hearing at IPONZ.

It is important that you keep detailed records of how you have used and promoted your trade mark so that you can easily prepare evidence establishing your reputation. You should retain samples of advertisements and packaging, plus detailed statistics on sales and advertising expenditure.

Checklist

◦ Here are our tips for putting your business in a good position to challenge trade mark applications which might adversely impact on your business.

◦ Ensure that your key trade marks are registered.

◦ Regularly check for new applications by searching the IPONZ database (or discuss putting a watch service in place with your attorney).

◦ Ensure that you retain records, statistics and samples of your use, sales and promotion of your trade marks, in case they are needed as evidence.