Objections

If you're reading this page, then IPONZ has probably raised an objection to your trade mark application.

To help you assess your options, we've briefly outlined the different types of objections that you might face.

1. Earlier trade mark applications / registrations ("Citations")

If another party has applied to register the same trade mark as you (or a similar trade mark), then IPONZ might raise what they call a "citation".  Essentially, they are saying that somebody else has beaten you to that trade mark, and that the respective trade marks are confusingly similar.

What can I do? 

  1. File arguments (in the form of a letter) with IPONZ explaining why the trade marks are not too similar, and why no one would be confused.
  2. Get a letter from the earlier trade mark owner (or owners) giving you formal consent to proceed with your application.
  3. Delete some of the goods/services in your application (if IPONZ considers the confusion to only be for some of the goods/services).

What are my chances of overcoming this objection?

It really depends on how similar the trade marks are and how many citations are raised.  It can range from "really, really hard" to "pretty straightforward"!

2. Distinctiveness and/or Descriptiveness objection

If IPONZ considers that your trade mark is descriptive of the goods/services that you want to register it for, or if they feel that it's a word or image that other traders in your particular area shouldn't be blocked from using in their day-to-day business,  then they may object accordingly.

What can I do?

  1. File arguments (in the form of a letter) with IPONZ explaining why the trade mark is not descriptive and/or is not one that other traders would need to use in their day-to-day business operations.
  2. Delete some of the goods/services in your application (if IPONZ considers the objection to only be applicable in relation to some of the goods/services).

What are my chances of overcoming this objection?

These types of objections are often quite difficult to overcome through argument alone; you might want to seek specialist advice.

That said, if the examiner identifies certain goods/services that the objection applies to, then simply deleting those goods/services will usually take care of the objection.

3. Real names

If your trade mark is (or includes) a person's name or image, IPONZ will seek confirmation that the person is happy with their name or image being used in your trade mark. (Fair enough!)

What can I do?

  1. If the person is alive: Provide a letter from the person consenting to your registration.
  2. If the person has been dead for less than 10 years: Provide a letter from the person's legal representative or estate consenting to your registration.
  3. If the name is an invented name: Write to IPONZ explaining that the name is an invented name.
  4. If the person has been dead for more than 10 years:  Write to IPONZ explaining that the person has been dead for over 10 years.

What are my chances of overcoming this objection?

Relatively straightforward, thankfully! (Assuming that you have the relevant permission, if required.)

4. Specification objections

Sometimes IPONZ will ask for clarification on the wording used in your goods/services listing.

You should not receive a specification objection when using DIY TM, as our wizard only allows you to include goods and services wording that IPONZ has pre-approved.

What can I do?

You don't need to do anything - if you receive a specification objection, we will take care of it for you (free of charge).