It was great to do my annual NZ IP update last night at Simpson Grierson’s office in Auckland. Thanks, Richard Watts and Sarah Chapman for hosting the function and for your hospitality. It was encouraging to have 341 registrants (mostly online), but still good to see that developments in IP law in Aotearoa New Zealand are a matter of interest to so many.
It was interesting to get some feedback from Warwick Rothnie shortly after the presentation. One of the recent cases I spoke about was the Trademark Hub case (Trademark Hub Pty Ltd [2025] NZIPOTM 11) where Assistant Commissioner Robb undertook a detailed review of IP Australia decisions where revocation of acceptance was dealt with and said at [59] that ” The [AU] decisions show a consistent approach to assessing whether an error or omission has occurred in different fact situations” and that his overall view was that the Australian decisions as a whole, were reasonably similar to those in New Zealand, and provided a good yardstick for making assessments under the equivalent New Zealand provisions.
Warwick Rothnie raised the issue of the Australian Registrar’s practice of revoking registrations and suggested that the view in Australia might not be quite as idyllic as the Assistant Commissioner portrayed, and that in practice it has become common to try to use the post-registration revocation process as a de facto cheaper alternative to opposition. Warwick also mentioned the criticism in the Brown Nose case (which, incidentally, has been appealed by the Registrar).
I did not mention the Brown Nose Day (I prefer to refer to the mark as used) case, even though I appeared as counsel in the New Zealand leg of the case and managed to convince Assistant Commissioner Aldred KC that Red Nose Day and Brown Nose Day were deceptively similar, unlike what his Honour, Justice McEvoy, found. It is, however, worth noting that at [7] his Honour stressed that in Australia the Registrar’s power to revoke a registration is an “extreme measure and should be exercised with caution and only where clear error or oversight is demonstrated”, which is a pretty high threshold.
New Zealand’s Trade Marks Act 2002 does not contain a provision equivalent to Section 84A of the Australian Trade Marks Act that empowers the Registrar to revoke registered trade marks on the Registrar’s own initiative. Once a mark is registered in New Zealand, removal requires an aggrieved/interested person to apply— except in very narrow circumstances involving breach of registered conditions. This represents an important difference between our two jurisdictions.
New Zealand law draws a sharp distinction between the Commissioner’s powers over applications and powers over registrations. Section 42 of the NZ Trade Marks Act 2002, which Assistant Commissioner Robb dealt with, permits the Commissioner to revoke the acceptance of an application before registration is complete, but this power ends once the mark enters the register. Section 42 allows revocation of acceptance only if the Commissioner is satisfied that either the application was accepted due to an error or omission by the Commissioner, or another application has priority under the Act. This is simply a corrective mechanism for the pre-registration phase, unlike the Australian provision that is now under scrutiny in the Brown Nose Day appeal.
