Letters of Consent and Honest Concurrent Use: Overcoming Citations Under Section 26

1. What is Section 26?

Section 26 of the Trade Marks Act 2002 is New Zealand's escape route from a prior-mark citation. Even where Section 25 would otherwise block registration because of a conflicting earlier trademark, the Commissioner must register the mark if:

• Section 26(a): the owner of the cited trademark consents to the registration, or
• Section 26(b): the Commissioner or the court considers that a case of honest concurrent use exists, or that other special circumstances make it proper for the mark to be registered, subject to any conditions imposed.

Together, these provisions make New Zealand one of the most flexible major jurisdictions for resolving trademark conflicts.

2. Letters of consent: binding on IPONZ

The most important — and most distinctive — feature of New Zealand practice is that a letter of consent is effectively binding. Section 26(a) is drafted in mandatory terms: if the owner of the cited mark consents, the Commissioner must register the applied-for mark.

This contrasts sharply with many other jurisdictions, where consent letters are merely one factor the examiner may weigh, or may be disregarded entirely if the office still considers consumers would be confused. In New Zealand, obtaining consent from the prior owner resolves the citation.

Practical points on consent:

• Consent should be given in writing by the owner of the cited mark (or all joint owners) and clearly identify the application being consented to.
• Consent is often obtained as part of a broader coexistence agreement that delimits each party's fields of use — a sensible safeguard for both sides.
• Because consent is decisive, a polite request to a non-competing prior owner is frequently the cheapest and fastest way to clear a citation.

3. When to consider requesting consent

Consent requests work best when:

• The parties operate in different market segments or trade channels, so real-world confusion is unlikely,
• The prior owner is not a direct competitor,
• The prior owner is a related company, supplier, or business partner, or
• The overlap arises from a broad legacy specification the prior owner does not actually use.

The request should be professional and non-confrontational, and may offer reciprocal undertakings (for example, agreeing not to expand into the prior owner's core goods). Be aware that a consent request also alerts the prior owner to your application; weigh this before approaching an aggressive competitor.

4. Honest concurrent use under Section 26(b)

Where consent cannot be obtained, an applicant may instead prove honest concurrent use — that it has honestly used its mark in New Zealand alongside the cited mark, such that registration is proper despite the conflict.

Factors traditionally weighed (deriving from the Pirie line of authority) include:

• The honesty of the adoption and use — the applicant must not have copied or been aware of the prior mark in a way that taints the adoption,
• The extent and duration of the concurrent use (volume of trade, geographic spread, advertising) — typically a period of several years is expected,
• The degree of confusion likely and any evidence of actual confusion during the period of coexistence,
• The relative inconvenience that would be caused to each party by registration or refusal.

Evidence is filed by statutory declaration and should be as concrete as possible: invoices, sales figures by year, advertising examples with dates, and market context.

5. "Other special circumstances"

Section 26(b) also empowers the Commissioner to register a mark where special circumstances — outside the ordinary run of cases — make registration proper. Examples that have been considered include prior use predating the cited mark, historical business relationships explaining the coexistence, or unusual sequences of events on the register.

Prior use of your mark before the cited mark was filed can be relevant here, but prior use on its own may not amount to a special circumstance — it is one factor among several. Each case turns on its own facts.

6. Conditions on registration

When allowing a mark under Section 26(b), the Commissioner may impose conditions — for example, geographic limitations, limitations to particular goods or trade channels, or the form in which the mark is used. Applicants should anticipate this and consider proposing sensible limitations proactively, which can make a borderline case easier to allow.

7. Section 26 versus the Australian approach

Applicants filing on both sides of the Tasman should note the differences:

• In Australia, honest concurrent use (s44(3) Trade Marks Act 1995) is discretionary, and letters of consent are a factor for the examiner.
• In New Zealand, consent under s26(a) is mandatory and decisive — the Commissioner must register once consent is provided.

This makes New Zealand strategy distinctly consent-driven: where a citation arises, the first question is almost always "can we get a letter of consent?"

8. Practical workflow when facing a citation

• Step 1 — Investigate the cited mark: Is it in use? Who owns it? Is the owner active in your market?
• Step 2 — Rank your options: consent request, argument on dissimilarity, specification amendment, honest concurrent use evidence, or non-use revocation of the cited mark.
• Step 3 — Approach for consent where the owner is approachable, ideally packaged with a short coexistence agreement.
• Step 4 — Prepare evidence early: if honest concurrent use is the fallback, begin assembling declarations and trading records well before the response deadline.

9. Summary: consent and honest concurrent use in New Zealand

Key takeaways:

• Section 26 overrides a Section 25 citation in defined circumstances — it is the primary escape route from prior-mark conflicts.
• A letter of consent is binding on IPONZ under s26(a) — a feature that makes New Zealand unusually consent-friendly.
• Honest concurrent use requires evidence of honest adoption plus substantial, documented trading alongside the cited mark in New Zealand.
• Special circumstances provide a residual pathway, and the Commissioner may impose conditions or limitations on any registration allowed under s26(b).

Used well, Section 26 converts many apparent dead-ends into registrable applications — often at far lower cost than contested proceedings.