What this sample covers

A letter heading block and a short summary of advice, as a client would read it first.
A status table for each New Zealand and Australian registration, separating renewed marks from lapsed ones.
An enforcement options table comparing New Zealand and Australia.
The main risks: a non-use counter-attack, the own-name defence, and ownership in a personal name rather than the company’s.
Assumptions, further information, timeframes and a recommendation outline.

Part of the letter	What a marker looks for
Summary of advice	A direct answer in the first page, with the lapsed classes flagged early
Status of registrations	Correct term, renewal and grace-period reasoning for both countries
Options and risks	Each option tied to a section and to the other side’s likely response
Assumptions and timeframes	Honest gaps, dated deadlines, what you would ask the client
Recommendation	A ranked course of action the client can actually follow

Model-answer extract

Letter heading

Privileged and confidential. Date: 20 March 2026. Re: ELBERT trade marks in New Zealand and Australia – options against the sponsor’s signature range and the snowboarder.

1. Summary of advice

Your coaching marks (Class 41) are in good standing in both countries, but they protect coaching, not equipment or clothing. The marks that match the sponsor’s products are the Class 25 and Class 28 registrations, and both lapsed on 15 January 2026. Until they are renewed you cannot sue on them in New Zealand.¹

The renewal window is still open, which is the most urgent point in this letter. Renewal should be filed first, then we can decide how hard to press the sponsor. The same lapse risk applies in Australia, with a separate grace period.²

2. Status of each registration

Registration	Deemed or filing date	Position at 20 March 2026	Can you sue on it today?
NZ Class 41 (coaching)	1 April 2014	Renewed (assumed; check the register). Next expiry 1 April 2034	Yes, but goods in other classes are not covered
NZ Class 25 (clothing, headgear, footwear, gloves, helmets)	15 January 2016	Expired 15 January 2026; shown as registered-past expiry date	No, not until renewed³
NZ Class 28 (skis, bindings, poles)	15 January 2016	As for Class 25	No, not until renewed
AU Class 41	Assumed as NZ	Renewed (assumed)	Yes, subject to non-use exposure
AU Classes 25 and 28	Assumed 15 January 2016	Past due date, in the six-month grace period	Check; do not rely on it until renewed⁴

A registration lasts ten years from the deemed date of registration, and it can be renewed for further ten-year periods.⁵ In New Zealand an application can be made up to six months after expiry, which on my calculation runs to about 15 July 2026. Please confirm that cut-off with IPONZ before relying on it. Once renewed, the registration takes effect from the original expiry date and is treated as never having lapsed.⁶

3. Enforcement options

Option	New Zealand	Australia
Infringement proceedings	Section 89 of the Trade Marks Act 2002. Identical sign on identical goods needs no confusion; similar goods need likely confusion.⁷ Remedies include an injunction, and damages or an account of profits.⁸	Section 120 of the Trade Marks Act 1995. The test uses “substantially identical” and “deceptively similar” language; check the subsections that fit each class.⁹
Passing off and consumer law	Preserved by s 88; Fair Trading Act 1986, s 9 is the misleading-conduct provision.¹⁰ Goodwill after the break in trading needs evidence.	Australian Consumer Law, s 18, is commonly pleaded alongside infringement.¹¹
Border protection	Notice to NZ Customs under s 137. It covers goods only, so Class 41 is no use here, and the mark must be validly registered.¹²	Notice of objection to the Australian Border Force under s 132, again on a registered mark.¹³
Negotiated outcome	Coexistence or licence discussion, backed by a credible threat of action	Same, with a separate Australian position

Some options are simply unavailable today. Sections 89 and 137 cannot be used on Classes 25 and 28 while they sit past expiry. Border protection cannot protect coaching services. These limits should be explained to the client in plain terms, not buried.

4. Key risks and likely responses

Non-use revocation. Expect the sponsor to answer a demand letter by attacking your registrations. In New Zealand an aggrieved person can seek revocation if the mark was not genuinely used for a continuous period of three years or more, counted from after registration and ending one month before the application.¹⁴ If the ELBERT mark has never been used on skis or clothing, Classes 25 and 28 are exposed. The Act protects an owner who starts or resumes genuine use after the three years but before the application is filed, and use begun in the final month is disregarded in most cases.¹⁵ Timing therefore matters.

The Supreme Court has held that there is no residual discretion to save a mark that fails the non-use test.¹⁶ In Australia, any person may apply to remove a mark on the three-year ground.¹⁷ Your Australian Class 41 mark is the likeliest target if you never traded there.

Own-name defence. The sponsor or the snowboarder may say the sign is the athlete’s name. Section 95 protects use of a person’s own name only if it is in accordance with honest practices.¹⁸ A nickname written as one word is a weaker fit than a legal name, and the user is a company selling a branded range. In Australia the equivalent defence is narrowly read.¹⁹ I would present this as arguable, not decided.

Ownership. The marks are in your personal name while JTL trades. Use by another person counts as the owner’s use only if authorised by, and subject to the control of, the owner.²⁰ A written licence, or evidence of control, should be in place before any claim.

5. Assumptions and further information

We assume the Class 41 registrations were renewed on time. Please send current register extracts.
We assume the Australian dates match the New Zealand dates, as you told us.
We assume no ELBERT goods have been sold in either country. Please tell us otherwise if samples, test batches or pre-orders exist.
What coaching was delivered under ELBERT after 2020, where, and by whom?
Do you have invoices, advertising and website records from 2013 to 2016 to prove goodwill?
Has the sponsor imported products, and can you obtain a sample and proof of sale?

6. Timeframes

Step	Timing
Renew NZ Classes 25 and 28	Now; the outer limit is six months after expiry, about 15 July 2026 (confirm)
Renew AU Classes 25 and 28	Now; a six-month grace period applies, with additional fees for each month late (check current IP Australia fees)²¹
Respond to a revocation application	IPONZ guidance gives two months to file a counterstatement and evidence²²
Customs detention	Roughly ten working days after the determination to persuade the importer or obtain a High Court order, which can be extended¹²
Product arrival	Expected next ski season; monitor imports from now

7. Recommended course of action

Renew the lapsed marks in both countries this week, and confirm each filing receipt.
Regularise the licence between you and JTL, and collect evidence of use and goodwill.
Consider starting genuine, documented trade in ELBERT-branded goods in New Zealand before any revocation application is filed.
File border notices for Classes 25 and 28 after renewal is confirmed.
Send a measured letter to the sponsor focused on clothing, where the goods are identical, rather than leading with the weaker coaching mark.
Keep a coexistence or licence outcome open, and file fresh applications as a backstop (this loses the 2016 priority date).

If you are working on a similar letter, our team can help structure a long advice report in the format your course expects.

Further help

For a different intellectual property format, read the LAWCOMM 785 patent letter of advice sample. You can also see other University of Auckland questions we have covered.

About the expert

Our law specialist for this kind of brief is Lucy Bishop, a Law and Legal Studies Writing Specialist whose profile lists Massey University, New Zealand. She is LLB-qualified with postgraduate research experience and works on commercial law, contract law and legal case analysis. Statutory references should be checked against the current legislation before you use them anywhere.

References

Trade Marks Act 2002, ss 59–60.
Trade Marks Act 1995 (Cth), ss 77–80; IP Australia, “How to renew my IP right”.
Trade Marks Act 2002, s 60(2).
Trade Marks Act 1995 (Cth), ss 79–80.
Trade Marks Act 2002, ss 57–58; Trade Marks Act 1995 (Cth), s 77.
Trade Marks Act 2002, s 60(3).
Trade Marks Act 2002, s 89.
Trade Marks Act 2002, s 106.
Trade Marks Act 1995 (Cth), s 120.
Trade Marks Act 2002, s 88; Fair Trading Act 1986, s 9.
Competition and Consumer Act 2010 (Cth), sch 2 (Australian Consumer Law), s 18, as applied in Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd [2019] FCA 902.
Trade Marks Act 2002, s 137; New Zealand Customs Service, “Filing border protection notices”.
Trade Marks Act 1995 (Cth), s 132; Australian Border Force, Notice of Objection form B1025.
Trade Marks Act 2002, ss 65–66.
Trade Marks Act 2002, s 66(3)–(4).
Crocodile International Pte Ltd v Lacoste [2017] NZSC 14.
Trade Marks Act 1995 (Cth), s 92(4)(b); s 93 (transitional timing for older registrations should be checked).
Trade Marks Act 2002, s 95.
Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd [2019] FCA 902; Trade Marks Act 1995 (Cth), s 122(1)(a)(i).
Trade Marks Act 2002, s 7.
IP Australia, “How to renew my IP right”.
Intellectual Property Office of New Zealand, “Revocation” guideline.