New Zealand Legislation: Acts
Acts are laws made by Parliament
Reprint as at 7 October 2011
| Public Act | 2002 No 49 |
| Date of assent | 4 December 2002 |
| Commencement | see section 2 |
Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this reprint.
A general outline of these changes is set out in the notes at the end of this reprint, together with other explanatory material about this reprint.
This Act is administered by the Ministry of Economic Development.
7 Meaning of use of trade mark
Part 2
Registrability of trade marks
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 2—Absolute 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 3—Relative 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
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
31 Classification of trade marks
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
37 Withdrawal, etc, of application
38 When Commissioner or court may amend application
Acceptance or rejection of application
41 Applicant must be notified of non-complying application
42 Revocation of acceptance 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 3—Opposition to application
47 Opposition to accepted application
48 Applicant's counter-statement
49 Commissioner's determination on opposition
Subpart 4—Registration 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 5—Additional 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 Patent Office
Subpart 6—When registration of trade mark ceases
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
76 Rectification or correction of register
Alteration in relation to registered trade mark
77 Alteration of registered trade mark not permitted
Alteration of certification trade mark regulations
79 Alteration of certification trade mark regulations
80 Advertisement of application for alteration of regulations
81 Commissioner's certificate that relates to certain assignments or transmissions [Repealed]
82 Registration of title to trade mark
[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]
Subpart 1—Civil proceedings for infringement
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
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
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 2—Criminal proceedings
117 When criminal proceedings may be commenced
118 Application of Sentencing Act 2002
119 Liability of officers of body corporate
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
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
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 2A—Enforcement 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 member of Police 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
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
134ZC Privilege against self-incrimination
134ZE Disclosure of information
134ZF No liability if functions performed or powers exercised in good faith
Subpart 3—Border protection measures
136 Application of sections 137 to 141
137 Notice may be given to chief executive
139 Chief executive must accept or decline notice
139A Chief executive may suspend accepted notice
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
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
Inspection of goods that bear infringing sign
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
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
Application to Commissioner or court?
158 Application to Commissioner or court?
159 Commissioner's appearance in certain proceedings
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
168 No costs on appeal against refusal to certify or to authorise use
169 Costs of Commissioner in proceedings before court
170 Appeals in relation to Commissioner's decisions
174 Provisions pending determination of appeal
Part 5
Administrative provisions and miscellaneous
Subpart 1—Commissioner 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
176 Hearing before exercise of Commissioner's discretion
178 Function of advisory committee
179 Membership of advisory committee
180 Advisory committee may regulate own procedure
Subpart 3—Register of trade marks
183 No notices of trusts may be entered in register
185 Offence to make false entry in register
186 Offences relating to false representation of trade mark
187 No compensation for diminution in rights attaching to trade mark
188 Opening and closing of Patent Office
189 Closing of Patent Office at short notice
191 Declarations, etc, on behalf of certain persons
192 Substitution of person other than applicant generally
193 Substitution of person other than opponent on notice of opposition
194 Amendment of documents other than application
196 Application of section 197
197 Method of service of notices
198 Annual report by Commissioner of Patents
199A Regulations: Madrid Protocol
200 Orders in Council relating to convention countries
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
