How to Write a Trade Mark Letter of Advice (LAWCOMM 782)
Quick answer: A strong LAWCOMM 782 post-registration letter of advice starts by checking whether each registration is still enforceable, then tests the other side’s likely counter-moves, then ends with a ranked recommendation. Most marks are won on three things: the renewal position, the non-use exposure and the honest list of assumptions.
This guide is for University of Auckland students facing the 2026 LAWCOMM 782 Trade Mark Practice letter of advice question, where a client holds trade marks in New Zealand and Australia and a well-known overseas brand is moving into her market. A worked extract is available in our LAWCOMM 782 letter of advice sample, for reference only.
If you would rather have a specialist build a model for your own brief, you can request a model answer from our team and use it to check your own structure.
What do markers want in a trade mark letter of advice?
They want advice, not an essay. The reader is a client who cannot afford a wrong date, so the letter has to say what she can enforce today, what she cannot, and what she should do first.
In this kind of scenario the scale of the problem is usually hidden in the dates. Some marks were renewed, some were not. A student who treats all six registrations as equally strong has missed the point of the exercise.
Markers also look for the other side’s perspective. If you advise suing and never mention that the defendant will attack your registration for non-use, the letter reads as one-sided. Real practitioners write the counter-argument into the advice.
Where are the marks in this assessment?
| Component | What to show | Where marks are usually lost |
|---|---|---|
| Status of registrations | Term, renewal window, effect of expiry in each country | Treating a lapsed class as enforceable |
| Enforcement options | Infringement, passing off, border protection, negotiation | Listing options without section numbers or limits |
| Risks and responses | Revocation for non-use, own-name defence, ownership | Ignoring the likely counter-claim |
| Assumptions and information needed | Specific questions that change the advice | Generic lines such as “more facts are needed” |
| Recommendation | A ranked plan with dates | Ending on a summary of options |
| Citation and style | Footnotes in New Zealand Law Style Guide format, correct pinpoints, GenAI disclosure if used | Unverified or invented authorities |
The word limit is tight, so the status table and the options table do a lot of the work. Use them.
How do you plan the letter step by step?
- Build a timeline of the client’s trading history, the registration dates and the opponent’s launch dates.
- Work out the status of every registration on the letter date. Term is ten years from the deemed date, and renewal is possible for a limited period after expiry.
- Match each registered class to the opponent’s actual goods. Clothing against clothing is the strongest fit; services against goods is the weakest.
- List the enforcement options for New Zealand, then Australia, and state which are unavailable and why.
- For each option, write the opponent’s most likely response and your answer to it.
- Draw up assumptions and a short, targeted list of questions for the client.
- Rank your recommendation and attach dates to each step.
- Footnote every statement of law, then check each source exists before you submit.
How do renewal, non-use and infringement fit together?
These three tests are separate, and the letter works best when you keep them separate. A mark can be renewed and still be revocable. It can be unused and still be currently registered. It can be lapsed and still be revived.
| Issue | New Zealand (Trade Marks Act 2002) | Australia (Trade Marks Act 1995) |
|---|---|---|
| Term and renewal | Ten years from the deemed date of registration (s 57); renewal under s 59, with an application possible up to six months after expiry | Ten-year term and renewal (ss 77 to 80); a six-month grace period applies with extra monthly fees (check IP Australia) |
| Effect of lapse | Status “registered-past expiry date”: not a registered mark for the enforcement provisions in Part 4, subparts 1 to 3 (s 60); renewal takes effect from the original expiry date | Rights lapse if the grace period passes; check ss 79 to 80 for the status of an unrenewed mark |
| Non-use | Revocation after three continuous years without genuine use (s 66), subject to special circumstances and to use resumed before the application | Removal under s 92(4)(b) on a three-year ground; check s 93 for the timing rules that apply to older registrations |
| Infringement | Section 89 | Section 120 |
| Own-name defence | Section 95, subject to honest practices | Section 122(1)(a)(i), read narrowly |
| Border protection | Notice to Customs under s 137 | Notice of objection under s 132 |
Check the current wording of each section on the official legislation sites before you cite it. The New Zealand non-use provisions were amended in 2020, and older articles and textbooks may describe a discretion that no longer exists. The Supreme Court in Crocodile International v Lacoste [2017] NZSC 14 had already held that there is no residual discretion to save a mark that fails the non-use test.
How should you handle the own-name defence?
Do not over-argue it. The defence in s 95 protects a person using their own name in accordance with honest practices in industrial or commercial matters. It does not obviously cover a stylised nickname used as the brand of a commercial range sold by a sponsor.
A sensible letter says three things. The defence is available only to the right user. It fails if the use is not honest. And the facts you need, such as how the athlete is actually known and who decided on the branding, are not yet in hand.
For Australia, the Federal Court has read the equivalent defence narrowly and has looked closely at good faith, as in Mitolo Wines [2019] FCA 902. Cite it only after reading the judgment yourself.
What do students struggle with in this letter?
From the questions we see on this type of task, a few pain points come up again and again.
Counting the dates. Students mix up filing date, deemed registration date and the date of entry on the register. For the term, the deemed date is what counts in New Zealand. Write the arithmetic out once in a table, then rely on it.
Knowing which provision is unavailable. The brief asks why some options may not work. The answer is rarely “the law is silent”. It is usually that a lapsed registration does not support an infringement action, or that border protection covers goods and not services.
Personal name versus company. When the client owns the marks but a company trades, use by the company counts as the owner’s use only if authorised and controlled. That single point can move a whole paragraph of your analysis.
Staying inside the word count. Most drafts run long because they describe the law first and the client second. Reverse that order.
What are the most common mistakes?
- Advising the client to sue on a class that has lapsed, without first recommending renewal.
- Forgetting that the other side can counter with a revocation application.
- Using the wrong period for non-use, or quoting a rule that has since changed.
- Treating New Zealand and Australian law as identical.
- Listing assumptions but never saying how each changes the advice.
- Copying section numbers from a blog or a chatbot without opening the Act.
That last one is the costliest. The brief penalises wrong or fabricated references heavily, so open every statute and case you cite.
What is the mark-maximising checklist?
- A dated status table for every registration, in both countries.
- Each option linked to a section number and a stated limit.
- A counter-argument for every option.
- Specific assumptions, and specific questions for the client.
- A recommendation that begins with the action that cannot wait.
- Footnotes in New Zealand Law Style Guide format, verified.
- A GenAI disclosure if you used any tool.
- Word count within the allowed margin.
If you need help organising a long advice document, our report writing help team can work from your outline.
Frequently asked questions
Can a client sue on a trade mark that has expired?
Not while it sits in the “registered-past expiry date” status in New Zealand. Section 60 says the mark is not a registered trade mark for the enforcement provisions in Part 4, subparts 1 to 3. If it is renewed before removal, the renewal takes effect from the original expiry date.
How long after expiry can a New Zealand trade mark be renewed?
Section 59 allows an application up to six months after the expiry date. After that, the Commissioner must remove the mark if the renewal conditions remain unmet. Always confirm the exact deadline and fees on the IPONZ site.
What is the non-use period for revocation in New Zealand?
Section 66 uses a continuous period of three years or more without genuine use, ending one month before the application. Special circumstances outside the owner’s control can excuse non-use, and genuine use resumed before the application can defeat the ground. Read the current section for the detail.
Does use by the owner’s company count as the owner’s use?
It can. Section 7 treats use by another person as the owner’s use where it is authorised by, and subject to the control of, the owner. Your letter should ask what licence or control exists between the client and her company.
Can border protection help against imports of branded goods?
Sometimes. In New Zealand a notice under s 137 must relate to goods for which the mark is registered, so a services class gives no help. In Australia, s 132 lets a registered owner give notice to the Australian Border Force. Both routes need a valid registration.
Do I need to cite the Australian Consumer Law and the Fair Trading Act?
Where the brief asks about other routes, yes, briefly. Section 88 of the Trade Marks Act 2002 preserves passing off and Fair Trading Act rights, and s 9 of that Act prohibits misleading conduct in trade. Keep it to a short paragraph, because the registration analysis carries the marks.
When your outline is ready and the deadline is close, you can send your brief to our team for a second pair of eyes. Our warranty policy and student reviews explain what to expect. For a related IP format, see how to challenge a patent application in New Zealand and Australia.
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. Our service provides model answers and guidance for reference; you remain responsible for your own submission and your university’s rules.
References
- Trade Marks Act 2002 (NZ), ss 7, 57, 59, 60, 65 to 67, 88, 89, 95, 137: New Zealand Legislation.
- Trade Marks Act 1995 (Cth), ss 77 to 80, 92 to 93, 120, 122, 132: Federal Register of Legislation.
- Fair Trading Act 1986 (NZ), s 9: NZLII.
- Intellectual Property Office of New Zealand, renewal and restoration practice guideline.
- Intellectual Property Office of New Zealand, revocation guideline.
- IP Australia, how to renew my IP right.
- New Zealand Customs Service, filing border protection notices.
- Crocodile International Pte Ltd v Lacoste [2017] NZSC 14: AustLII.
- Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd [2019] FCA 902: Federal Court of Australia.
