Reprint as at 13 September 2014

Trade Marks Act 2002

Public Act2002 No 49
Date of assent4 December 2002
Commencementsee 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

1 Title

Part 1
Preliminary

2 Commencement

3 Purposes

4 Overview

5 Interpretation

6 Meaning of use of sign

7 Meaning of use of trade mark

8 Act binds the Crown

Part 2
Registrability of trade marks

Subpart 1Preliminary

Nature of registered trade mark

9 Nature of registered trade mark

Rights that attach to registered trade marks

10 Rights that attach to registered trade marks

11 Additional matters that relate to rights attaching to registered trade marks

Rights that attach to application

12 Rights that attach to application

Registrability of trade marks: general

13 When trade mark registrable

14 Additional provisions that relate to registrability of certification trade marks

15 Additional provisions that relate to registrability of collective trade marks

16 Commissioner's preliminary advice regarding distinctive character of trade mark

Subpart 2Absolute grounds for not registering trade mark

17 Absolute grounds for not registering trade mark: general

Registrability of non-distinctive trade marks

18 Non-distinctive trade mark not registrable

19 Relevance of colour to distinctive character of trade mark

20 Trade mark that contains protected geographical indication must not be registered

21 Trade mark that contains commonly used chemical names must not be registered

Subpart 3Relative grounds for not registering trade mark

Registrability of trade mark that contains certain words

22 Registrability of trade mark that contains certain words

Registrability of trade mark that contains person's name

23 Registrability of trade mark that contains person's name

24 Registrability of trade mark that contains representations of Royal Family

Registrability of identical or similar trade marks

25 Registrability of identical or similar trade mark

26 Exceptions

Registrability of trade mark that contains flags

27 Registrability of trade mark that contains representation of flag, etc, generally

28 Registrability of trade mark that contains flag, State emblems, etc, of convention country

29 Registrability of trade mark that contains armorial bearings, etc, of certain international organisations

30 When emblems, etc, are protected under Paris Convention or TRIPS Agreement

Part 3
Process for obtaining registration of trade mark and other matters

Subpart 1Preliminary

31 Classification of trade marks

Subpart 2Applications

General

32 Application: how made

33 Joint applications

Priority of applications

34 Priority of applications for registration of identical or similar trade marks

35 Commissioner's requirements in relation to applications without priority

36 Priority of application to which convention country application relates

Amendment of application

37 Withdrawal, etc, of application

38 When Commissioner or court may amend application

Acceptance or rejection of application

39 Examination of application

40 Acceptance of application

41 Applicant must be notified of non-complying application

42 Revocation of acceptance of application

43 Rejection of application

44 Abandonment of application

45 Applicant must be notified of grounds, etc, of conditional acceptance or rejection of application

Advertisement of accepted application

46 Advertisement of accepted application

Subpart 3Opposition to application

47 Opposition to accepted application

48 Applicant's counter-statement

49 Commissioner's determination on opposition

Subpart 4Registration of trade mark

50 When trade mark must be registered

51 Commissioner's requirements on registration

52 Commissioner may dispense with production of probate or letters of administration in certain cases

53 Reissuing certificate of registration

Subpart 5Additional matters that relate to certification trade marks

54 When regulations that govern use of certification trade mark must be provided

55 Consideration of application for registration of certification trade mark

56 Approved regulations must be deposited at Intellectual Property Office of New Zealand

Subpart 6When registration of trade mark ceases

Duration of registration

57 Duration of registration

Renewal of registration

58 Renewal of registration

59 Notice of pending expiration of registration of trade mark

60 Status of trade mark removed from register for non-payment of renewal fee

Voluntary cancellation of registration of trade mark

61 Voluntary cancellation of registration of trade mark

Mandatory cancellation or alteration of registration of trade mark

62 Cancellation or alteration of registration of trade mark for breach of condition

63 Cancellation or alteration of registration of certification trade mark

64 Cancellation or alteration of registration of collective trade mark

Revocation of registration of trade mark

65 Application for revocation of registration of trade mark

66 Grounds for revoking registration of trade mark

67 Onus of proof for revocation of registration of trade mark for non-use

68 Revocation of registration of trade mark

Disclaimer of use of trade mark

69 Voluntary disclaimer of trade mark by owner

70 Disclaimer of trade mark as condition of not revoking its registration

71 Disclaimer of trade mark for public interest reasons

72 Rights affected by disclaimer

Invalidity of registration of trade marks

73 Invalidity of registration of trade mark

74 Effect of declaration of invalidity

75 Presumption of validity of registration of trade mark

Rectification of register

76 Rectification or correction of register

Subpart 7Other matters

Alteration in relation to registered trade mark

77 Alteration of registered trade mark not permitted

78 Alteration of register

Alteration of certification trade mark regulations

79 Alteration of certification trade mark regulations

80 Advertisement of application for alteration of regulations

Assignment or transmission

81 Commissioner's certificate that relates to certain assignments or transmissions [Repealed]

82 Registration of title to trade mark

Licensees

[Repealed]

83 Application for registration of licensee [Repealed]

84 Registration of licensee [Repealed]

85 Assigning or transmitting right to use trade mark

86 Alteration of registration of licensee [Repealed]

87 Cancellation of registration of licensee [Repealed]

Part 4
Legal proceedings

Subpart 1Civil proceedings for infringement

How Act affects other rights

88 How Act affects other rights

Acts amounting to infringement

89 Infringement where identical or similar sign used in course of trade

90 Infringement where non-compliance with certain contractual requirements

91 No defence that infringement arose from use of company name

Acts not amounting to infringement

92 No infringement where trade mark used in circumstances not covered by registration

93 No infringement where more than 1 identical or similar registered trade marks used

94 No infringement for comparative advertising of registered trade mark

95 No infringement for honest practices

96 No infringement for certain continuous use of unregistered trade mark

97 No infringement for use in relation to certain identical or similar goods

97A Exhaustion of rights conferred by registered trade mark

98 When owner or licensee consents to use of registered trade mark

When infringement proceedings may be brought

99 No proceedings for infringement of unregistered trade mark

100 Time for bringing proceedings for infringement of registered trade mark

Who may apply for relief for infringement of registered trade mark

101 Who may apply for relief for infringement of registered trade mark

102 Licensee may request owner of registered trade mark to bring proceedings

103 Consequences of owner of registered trade mark not bringing proceedings

104 Consequences of licensee commencing proceedings

Unjustified proceedings

105 Unjustified proceedings

Types of relief available for infringement

106 Types of relief available for infringement of registered trade mark

107 Damages for infringement of collective trade mark

108 Order for erasure, etc, of offending sign

Orders for delivery up in civil proceedings

109 Order for delivery up of infringing goods, infringing material, or infringing object

110 Order for disposal of infringing goods, infringing material, or infringing object

111 Matters to be considered by court

112 Directions for service

113 Rights of persons with interest in infringing goods, infringing material, or infringing object

114 When order under section 110 takes effect

115 Miscellaneous court order if more than 1 person interested in infringing goods, infringing material, or infringing object

116 Position where no order made under section 110

Subpart 2Criminal proceedings

Preliminary

117 When criminal proceedings may be commenced

118 Application of Sentencing Act 2002

119 Liability of officers of body corporate

Offences and penalties

120 Offence to counterfeit registered trade mark

121 Offence to falsely apply registered trade mark to goods or services

122 Offence to make object for making copies of registered trade mark, etc

123 Offence to possess object for making copies of registered trade mark, etc

124 Offence to import or sell, etc, goods with falsely applied registered trade mark

125 Penalties for offences

Orders for delivery up in criminal proceedings

126 Order for delivery up in criminal proceedings

127 When order for delivery up may be made

128 Order for disposal of goods or other object ordered to be delivered up

129 Matters to be considered by court

130 Directions for service

131 Rights of persons with interest in goods or other object

132 When order under section 128 takes effect

133 Miscellaneous court orders if more than 1 person interested in goods or other object

134 Position where no order made under section 128

Subpart 2AEnforcement officers

Appointment and functions of enforcement officers

134A Chief executive may appoint enforcement officers

134B Authority to act as enforcement officer

134C Functions of enforcement officer

Enforcement officer's power of entry and examination without warrant

134D Enforcement officer’s power of entry and examination without warrant

134E What enforcement officer and person assisting may do when exercising power of entry and examination without warrant

Entry and search under search warrant

134F Enforcement officer or constable may apply for search warrant

134G Application for search warrant

134H Mode of application for search warrant

134I Form and content of search warrant

134J Transmission of search warrant

134K Retention of documents

134L When search warrant is executed

134M Powers of entry and search under warrant

134N Powers of persons called to assist

General provisions that apply to powers of entry and search, and entry and examination

134O Application of sections 134P to 134S

134P Powers and duties of person exercising power of entry and search or power of entry and examination

134Q Inventory of things seized

134R Compliance with certain provisions may be deferred in certain circumstances

134S Further extension to, or dispensation from, obligation to comply with certain provisions

Provisions relating to things seized

134T Period things seized may be retained

134U Application for order to return things seized

134V Disposal of things seized

134W Disposal of perishable things

Other powers of enforcement officers

134X Enforcement officer may apply for production order

134Y Judge may order documents to be produced

134Z Powers of enforcement officer to whom documents produced

134ZA Offence of failing to comply with order to produce documents

Powers of Police

134ZB Powers of Police

Miscellaneous

134ZC Privilege against self-incrimination

134ZD Other privileges

134ZE Disclosure of information

134ZF No liability if functions performed or powers exercised in good faith

Subpart 3Border protection measures

Interpretation

135 Interpretation

Notice of infringing sign

136 Application of sections 137 to 141

137 Notice may be given to chief executive

138 Contents of notice

139 Chief executive must accept or decline notice

139A Chief executive may suspend accepted notice

139B Notice of suspension

139C Chief executive may reinstate accepted notice

140 Duration of accepted notice

141 Licensee may require notice

Investigation where notice of infringing sign

142 Application of sections 143 to 146

143 Determination to conduct investigation

144 Claimant to provide information for investigation

145 Limitations on requirement to supply information

Chief executive's determination

146 Chief executive's determination

147 Notice of determination

148 Consequences of failure to serve notice

Detention of goods bearing infringing sign

149 Detention of goods bearing infringing sign

150 When detained goods may be released

151 Forfeiture of goods by consent

Proceedings relating to goods bearing infringing sign

152 Application for various orders relating to goods bearing infringing sign

153 Proceedings to determine whether goods bear infringing sign

154 Powers of court

Inspection of goods that bear infringing sign

155 Inspection of goods

Enforcement powers of Customs officers

155A Customs officer may seize goods in control of Customs

155B Chief executive may require person to produce documents concerning goods in control of Customs

155C Chief executive may require person to appear and answer questions concerning goods in control of Customs

155D Customs officer may apply for production order

155E Judge may order documents to be produced

155F Powers of Customs officer to whom documents produced

155G Issue of search warrants to Customs officers

155H Privilege against self-incrimination

155I Other privileges

155J Offences

Immunity

155K No liability if powers exercised in good faith

Delegation of chief executive's powers, duties, and functions

156 Delegation of chief executive's powers, duties, and functions

157 Protection of persons acting under authority of Act

Subpart 4Miscellaneous

Application to Commissioner or court?

158 Application to Commissioner or court?

Appearance of Commissioner

159 Commissioner's appearance in certain proceedings

Evidence

160 Mode of giving evidence in proceedings before Commissioner

161 Evidence of entries, documents, etc

162 Registration is prima facie evidence of validity

163 Appeal against decision of Commissioner that relates to assignments and transmissions

164 Trade usage must be considered

165 Certificate of validity

Costs

166 Costs

167 Security for costs

168 No costs on appeal against refusal to certify or to authorise use

169 Costs of Commissioner in proceedings before court

Appeals

170 Appeals in relation to Commissioner's decisions

171 Notice of appeal

172 Hearing of appeal

173 Determination of appeals

174 Provisions pending determination of appeal

Part 5
Administrative provisions and miscellaneous

Subpart 1Commissioner and Assistant Commissioners of Trade Marks

175 Commissioner and Assistant Commissioners of Trade Marks

175A Functions of Commissioner

175B Powers of Assistant Commissioners

175C Power of Commissioner to delegate

175D Liability of Commissioner and others

176 Hearing before exercise of Commissioner's discretion

Subpart 2Advisory committee

177 Advisory committee

178 Function of advisory committee

179 Membership of advisory committee

180 Advisory committee may regulate own procedure

Subpart 3Register of trade marks

General

181 Register of trade marks

182 Contents of register

183 No notices of trusts may be entered in register

Search of register

184 Search of register

Offences relating to register

185 Offence to make false entry in register

186 Offences relating to false representation of trade mark

Subpart 4Miscellaneous

No compensation

187 No compensation for diminution in rights attaching to trade mark

Intellectual Property Office of New Zealand

188 Opening hours of Intellectual Property Office of New Zealand

189 Closing of Intellectual Property Office of New Zealand at short notice

Personal representatives

190 Recognition of agents

191 Declarations, etc, on behalf of certain persons

Substitution

192 Substitution of person other than applicant generally

193 Substitution of person other than opponent on notice of opposition

Amendment of other documents

194 Amendment of documents other than application

Fees

195 Fees

Service of notices

196 Application of section 197

197 Method of service of notices

Annual report

[Repealed]

198 Annual report by Commissioner of Patents [Repealed]

Regulation-making powers

199 Regulations

199A Regulations: Madrid Protocol

200 Orders in Council relating to convention countries

Amendments

201 Acts amended

Transitional and savings provisions

202 Repeal of Trade Marks Act 1953

203 Transitional provision for certain applications and proceedings

204 Transitional provision for notices given under section 54B of Trade Marks Act 1953

205 Transitional provision for fees for defensive trade marks

206 Certificate of validity of contested registration

207 Orders in Council relating to convention countries under Trade Marks Act 1953

208 Status of trade marks registered before commencement of Act

209 Status of notes, etc, on register before commencement of Act

Schedule
Acts amended

Reprint notes