Can they do that?! Macpherson Kelley’s successful trade mark revocation of acceptance appeal

For many trade mark applicants, obtaining trade mark registration is hard fought. The process can be long and filled with hurdles, so when a trade mark application is accepted, it’s a real victory for the client. It can be all the more devastating then, when, following acceptance of a trade mark application, the relevant intellectual property office subsequently proposes to revoke that acceptance.

This was a situation faced by one of Macpherson Kelley’s major clients in New Zealand. Following nearly a year’s worth of work seeking to get our client’s important trade mark accepted in New Zealand, our IP lawyers were notified on 7 May 2024 that our client’s application had at last been accepted. However, not three days later, on 10 May 2024, our team received notification that the Intellectual Property Office of New Zealand (IPONZ) was proposing to revoke its acceptance. This left our client asking… “can they do that?!”.

Trade marks: What is a revocation of acceptance, and when can it be made?

If, on the balance of probabilities, acceptance of a trade mark is made in error, then IPONZ may revoke the acceptance. However, in New Zealand, an ‘error’ is narrowly restricted to cases where the Commissioner is either mistaken as to relevant facts, or has acted in ignorance of the same. A revocation cannot be issued merely because one trade mark examiner has a different opinion to another as to the way relevant facts should be interpreted.

This is important because trade mark registrability can often be subjective – in that reasonable people can disagree as to the interpretation of a trade mark’s meaning and/or similarity to another trade mark. Incidentally, people can disagree as to the facts which are relevant when determining acceptance.

Due to the above, revocation notices are exceptionally rare.

Why was the application revoked?

As part of the registration process, trade marks must be examined to determine registrability in line with legislative requirements. This will include an examiner conducting searches of the trade mark register to identify, among other things, whether the trade mark application is deceptively similar or identical to other registered trade marks.

Standard office practice requires that, if an examiner finds a potentially similar conflicting trade mark during their searches, but chooses not to raise it as a citation, they must explain their reasoning in a file note. This practice generally serves to reduce the occurrence of revocation notices (as it demonstrates that the examiner is neither mistaken nor ignorant of all relevant facts).

A trade mark acceptance revocation in practice

Notably, in the case faced by our client, the initial examiner, when examining our client’s trade mark application on two separate occasions, came across a registered trade mark (the Cited Mark) which comprised two of the core words present within our client’s trade mark. The Cited Mark was also registered in relation to the same goods for which our client’s trade mark sought coverage over.

It is fair to say that the Cited Mark would be regarded by a reasonable number of people as being similar to our client’s trade mark. However, it would also be fair to say that a reasonable number of people would regard the Cited Mark as being dissimilar from our client’s trade mark.

The initial examiner’s examination check sheet, as per the revocation notice received by our client, detailed the examiner’s two separate reviews of New Zealand’s trade marks register. On each occasion, the Cited Mark appeared on the list of registered marks which had appeared to the examiner as a result of their searches. However, the revocation notice confirmed that the examiner made the following notes in respect of each occasion they carried out an examination of New Zealand’s trade marks register:

1. 17 January 2024: No confusingly similar marks found.
2. 6 May 2024: Searches redone, no further marks of note.

The revocation notice provided that IPONZ considered it was entitled to revoke our client’s trade mark acceptance on the basis that it was evident the initial examiner had overlooked and thus not been aware of the Cited Mark. The revocation notice inferred that the Cited Mark was so evidently similar to our client’s trade mark application that it was clear our client’s application had been accepted in error.

Macpherson Kelley’s response

Having carefully reviewed IPONZ’s revocation notice and applicable case law, Macpherson Kelley’s Intellectual Property lawyers formed the view that IPONZ was not entitled to revoke acceptance of our client’s trade mark application. As such, our lawyers requested a formal hearing to consider the revocation notice.

At this hearing, our IP team filed submissions and argued that revocation was not permitted as there had been no error (as defined by relevant case law). Specifically, our lawyers noted or otherwise asserted the below.

• It may readily be presumed that the initial examiner at all times conducted their duty with care, precision, and diligence (as is expected of all trade mark examiners).
• The Cited Mark had appeared before the examiner in the examiner’s search reports on two separate occasions.
• Owing to numbered paragraph 1, it is more probable than not that the examiner had been aware of the Cited Mark at all material times.
• With the above in mind, the examiner’s notes in their check sheet did not in fact indicate the examiner had made an error in permitting acceptance (owing to them being unaware or mistaken of relevant facts – i.e., the existence of the Cited Mark). Rather, the examiner’s notes demonstrated that the Examiner did not consider that the Cited Mark was substantially identical or deceptively similar to our client’s trade mark. It was asserted this was a fair and reasonable view to form.

As a consequence of the above, it was further our lawyers’ position that having simply formed a different view regarding similarity, IPONZ had issued the revocation without an appropriate error or mistake having occurred. Our lawyers also asserted that IPONZ should have, in its discretion, opted not to use its revocation powers even if there was a mistake, as the Cited Mark was sufficiently different to our client’s sought-after trade mark.

Outcome

On 27 May 2025, the Commissioners decision was handed down. In short, the Commissioner agreed the issue was not one of oversight (leading to an error/mistake), but of interpretation. As was neatly canvassed by the Assistant Commissioner Nigel Robb in his decision at [26]:

“…whether an error or omission arises depends on some aspect of the basic research and examination not having been performed resulting in some basic and objective fact or information not being before the examiner.”

As the relevant fact (being the existence of the Cited Mark) appeared twice before the examiner, and in all the circumstances, was more likely than not to have been contemplated by the initial examiner, the power of revocation was therefore not open to IPONZ. The decision confirmed that what constitutes a “mistake” or “error” must be assessed on the specific facts of each case.

Interestingly, the Assistant Commissioner refused to follow the previously leading case of Apples, stating that IPONZ is not required to provide evidence substantiating a revocation by way of affidavit or statutory declaration, citing the unnecessary administrative burden such a requirement would impose. This is despite the fact that revocation cases are incredibly rare and often involve significant consequences for applicants.

Additionally, the Assistant Commissioner also acknowledged that the power to revoke is discretionary but did not elaborate on how or when that discretion should be exercised.

Moving forward after an overturned trade mark acceptance revocation

For Macpherson Kelley’s client, the outcome was a significant win. It preserved their trade mark rights in circumstances where many applicants or their legal representatives might have simply thrown in the towel. The IP team’s efforts for our client resulted in them avoiding the significant costs associated with failing to obtain trade mark registration for a mark which is already in use, and avoid costs associated with an opposition that may have been filed in the event the trade mark was revoked.

More broadly, the case serves as a reminder that applicants should not always accept an Office’s opinion as final. There is room to challenge decisions—especially when they are based on subjective interpretations rather than legal error.

Reach out to our Intellectual Property lawyers for advice

At Macpherson Kelley, we pride ourselves on helping clients navigate the complexities of IP law with clarity, confidence, and commercial acumen. Whether you’re facing a revocation, opposition, or any other challenge to your rights, Macpherson Kelley’s Intellectual Property team is ready to assist. Because in IP law, as in life, success is not the absence of adversity—it’s the persistence through it.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.