Reprint as at 13 May 2016

Coat of Arms of New Zealand

Trade Marks Act 2002

Public Act
 
2002 No 49
Date of assent
 
4 December 2002
Commencement
 
see section 2
Note

Changes authorised by subpart 2 of Part 2 of the Legislation Act 2012 have been made in this official reprint.

Note 4 at the end of this reprint provides a list of the amendments incorporated.

This Act is administered by the Ministry of Business, Innovation, and Employment.

Contents

1Title
2Commencement
3Purposes
4Overview
5Interpretation
6Meaning of use of sign
7Meaning of use of trade mark
8Act binds the Crown
9Nature of registered trade mark
10Rights that attach to registered trade marks
11Additional matters that relate to rights attaching to registered trade marks
12Rights that attach to application
13When trade mark registrable
14Additional provisions that relate to registrability of certification trade marks
15Additional provisions that relate to registrability of collective trade marks
16Commissioner’s preliminary advice regarding distinctive character of trade mark
17Absolute grounds for not registering trade mark: general
18Non-distinctive trade mark not registrable
19Relevance of colour to distinctive character of trade mark
20Trade mark that contains protected geographical indication must not be registered
21Trade mark that contains commonly used chemical names must not be registered
22Registrability of trade mark that contains certain words
23Registrability of trade mark that contains person’s name
24Registrability of trade mark that contains representations of Royal Family
25Registrability of identical or similar trade mark
26Exceptions
27Registrability of trade mark that contains representation of flag, etc, generally
28Registrability of trade mark that contains flag, State emblems, etc, of convention country
29Registrability of trade mark that contains armorial bearings, etc, of certain international organisations
30When emblems, etc, are protected under Paris Convention or TRIPS Agreement
31Classification of trade marks
32Application: how made
33Joint applications
34Priority of applications for registration of identical or similar trade marks
35Commissioner’s requirements in relation to applications without priority
36Priority of application to which convention country application relates
37Withdrawal, etc, of application
38When Commissioner or court may amend application
39Examination of application
40Acceptance of application
41Applicant must be notified of non-complying application
42Revocation of acceptance of application
43Rejection of application
44Abandonment of application
45Applicant must be notified of grounds, etc, of conditional acceptance or rejection of application
46Advertisement of accepted application
47Opposition to accepted application
48Applicant’s counter-statement
49Commissioner’s determination on opposition
50When trade mark must be registered
51Commissioner’s requirements on registration
52Commissioner may dispense with production of probate or letters of administration in certain cases
53Reissuing certificate of registration
54When regulations that govern use of certification trade mark must be provided
55Consideration of application for registration of certification trade mark
56Approved regulations must be deposited at Intellectual Property Office of New Zealand
57Duration of registration
58Renewal of registration
59Notice of pending expiration of registration of trade mark
60Status of trade mark removed from register for non-payment of renewal fee
61Voluntary cancellation of registration of trade mark
62Cancellation or alteration of registration of trade mark for breach of condition
63Cancellation or alteration of registration of certification trade mark
64Cancellation or alteration of registration of collective trade mark
65Application for revocation of registration of trade mark
66Grounds for revoking registration of trade mark
67Onus of proof for revocation of registration of trade mark for non-use
68Revocation of registration of trade mark
69Voluntary disclaimer of trade mark by owner
70Disclaimer of trade mark as condition of not revoking its registration
71Disclaimer of trade mark for public interest reasons
72Rights affected by disclaimer
73Invalidity of registration of trade mark
74Effect of declaration of invalidity
75Presumption of validity of registration of trade mark
76Rectification or correction of register
77Alteration of registered trade mark not permitted
78Alteration of register
78AAlteration of register concerning certain inconsistent information
79Alteration of certification trade mark regulations
80Advertisement of application for alteration of regulations
81Commissioner’s certificate that relates to certain assignments or transmissions [Repealed]
82Registration of title to trade mark
[Repealed]
83Application for registration of licensee [Repealed]
84Registration of licensee [Repealed]
85Assigning or transmitting right to use trade mark
86Alteration of registration of licensee [Repealed]
87Cancellation of registration of licensee [Repealed]
88How Act affects other rights
89Infringement where identical or similar sign used in course of trade
90Infringement where non-compliance with certain contractual requirements
91No defence that infringement arose from use of company name
92No infringement where trade mark used in circumstances not covered by registration
93No infringement where more than 1 identical or similar registered trade marks used
94No infringement for comparative advertising of registered trade mark
95No infringement for honest practices
96No infringement for certain continuous use of unregistered trade mark
97No infringement for use in relation to certain identical or similar goods
97AExhaustion of rights conferred by registered trade mark
98When owner or licensee consents to use of registered trade mark
99No proceedings for infringement of unregistered trade mark
100Time for bringing proceedings for infringement of registered trade mark
101Who may apply for relief for infringement of registered trade mark
102Licensee may request owner of registered trade mark to bring proceedings
103Consequences of owner of registered trade mark not bringing proceedings
104Consequences of licensee commencing proceedings
105Unjustified proceedings
106Types of relief available for infringement of registered trade mark
107Damages for infringement of collective trade mark
108Order for erasure, etc, of offending sign
109Order for delivery up of infringing goods, infringing material, or infringing object
110Order for disposal of infringing goods, infringing material, or infringing object
111Matters to be considered by court
112Directions for service
113Rights of persons with interest in infringing goods, infringing material, or infringing object
114When order under section 110 takes effect
115Miscellaneous court order if more than 1 person interested in infringing goods, infringing material, or infringing object
116Position where no order made under section 110
117When criminal proceedings may be commenced
118Application of Sentencing Act 2002
119Liability of officers of body corporate
120Offence to counterfeit registered trade mark
121Offence to falsely apply registered trade mark to goods or services
122Offence to make object for making copies of registered trade mark, etc
123Offence to possess object for making copies of registered trade mark, etc
124Offence to import or sell, etc, goods with falsely applied registered trade mark
125Penalties for offences
126Order for delivery up in criminal proceedings
127When order for delivery up may be made
128Order for disposal of goods or other object ordered to be delivered up
129Matters to be considered by court
130Directions for service
131Rights of persons with interest in goods or other object
132When order under section 128 takes effect
133Miscellaneous court orders if more than 1 person interested in goods or other object
134Position where no order made under section 128
134AChief executive may appoint enforcement officers
134BAuthority to act as enforcement officer
134CFunctions of enforcement officer
134DEnforcement officer’s power of entry and examination without warrant
134EWhat enforcement officer and person assisting may do when exercising power of entry and examination without warrant
134FEnforcement officer or constable may apply for search warrant
134GApplication for search warrant
134HMode of application for search warrant
134IForm and content of search warrant
134JTransmission of search warrant
134KRetention of documents
134LWhen search warrant is executed
134MPowers of entry and search under warrant
134NPowers of persons called to assist
134OApplication of sections 134P to 134S
134PPowers and duties of person exercising power of entry and search or power of entry and examination
134QInventory of things seized
134RCompliance with certain provisions may be deferred in certain circumstances
134SFurther extension to, or dispensation from, obligation to comply with certain provisions
134TPeriod things seized may be retained
134UApplication for order to return things seized
134VDisposal of things seized
134WDisposal of perishable things
134XEnforcement officer may apply for production order
134YJudge may order documents to be produced
134ZPowers of enforcement officer to whom documents produced
134ZAOffence of failing to comply with order to produce documents
134ZBPowers of Police
134ZCPrivilege against self-incrimination
134ZDOther privileges
134ZEDisclosure of information
134ZFNo liability if functions performed or powers exercised in good faith
135Interpretation
136Application of sections 137 to 141
137Notice may be given to chief executive
138Contents of notice
139Chief executive must accept or decline notice
139AChief executive may suspend accepted notice
139BNotice of suspension
139CChief executive may reinstate accepted notice
140Duration of accepted notice
141Licensee may require notice
142Application of sections 143 to 146
143Determination to conduct investigation
144Claimant to provide information for investigation
145Limitations on requirement to supply information
146Chief executive’s determination
147Notice of determination
148Consequences of failure to serve notice
149Detention of goods bearing infringing sign
150When detained goods may be released
151Forfeiture of goods by consent
152Application for various orders relating to goods bearing infringing sign
153Proceedings to determine whether goods bear infringing sign
154Powers of court
155Inspection of goods
155ACustoms officer may seize goods in control of Customs
155BChief executive may require person to produce documents concerning goods in control of Customs
155CChief executive may require person to appear and answer questions concerning goods in control of Customs
155DCustoms officer may apply for production order
155EJudge may order documents to be produced
155FPowers of Customs officer to whom documents produced
155GIssue of search warrants to Customs officers
155HPrivilege against self-incrimination
155IOther privileges
155JOffences
155KNo liability if powers exercised in good faith
156Delegation of chief executive’s powers, duties, and functions
157Protection of persons acting under authority of Act
158Application to Commissioner or court?
159Commissioner’s appearance in certain proceedings
160Mode of giving evidence in proceedings before Commissioner
161Evidence of entries, documents, etc
162Registration is prima facie evidence of validity
163Appeal against decision of Commissioner that relates to assignments and transmissions
164Trade usage must be considered
165Certificate of validity
166Costs
167Security for costs
168No costs on appeal against refusal to certify or to authorise use
169Costs of Commissioner in proceedings before court
170Appeals in relation to Commissioner’s decisions
171Notice of appeal
172Hearing of appeal
173Determination of appeals
174Provisions pending determination of appeal
175Commissioner and Assistant Commissioners of Trade Marks
175AFunctions of Commissioner
175BPowers of Assistant Commissioners
175CPower of Commissioner to delegate
175DLiability of Commissioner and others
176Hearing before exercise of Commissioner’s discretion
177Advisory committee
178Function of advisory committee
179Membership of advisory committee
180Advisory committee may regulate own procedure
181Register of trade marks
182Contents of register
183No notices of trusts may be entered in register
184Search of register
185Offence to make false entry in register
186Offences relating to false representation of trade mark
187No compensation for diminution in rights attaching to trade mark
188Opening hours of Intellectual Property Office of New Zealand
189Closing of Intellectual Property Office of New Zealand at short notice
190Recognition of agents
191Declarations, etc, on behalf of certain persons
192Substitution of person other than applicant generally
193Substitution of person other than opponent on notice of opposition
194Amendment of documents other than application
195Fees
196Application of section 197
197Method of service of notices
[Repealed]
198Annual report by Commissioner of Patents [Repealed]
199Regulations
199ARegulations: Madrid Protocol
200Orders in Council relating to convention countries
201Acts amended
202Repeal of Trade Marks Act 1953
203Transitional provision for certain applications and proceedings
204Transitional provision for notices given under section 54B of Trade Marks Act 1953
205Transitional provision for fees for defensive trade marks
206Certificate of validity of contested registration
207Orders in Council relating to convention countries under Trade Marks Act 1953
208Status of trade marks registered before commencement of Act
209Status of notes, etc, on register before commencement of Act
Reprint notes