5 Interpretation

(1)

In this Act, unless the context otherwise requires,—

Act includes regulations made under this Act

actual date of registration means the date entered on the register by the Commissioner under section 51(a)

advisory committee means the advisory committee appointed under section 177

applicant

(a)

means a person who has applied for the registration of a trade mark; and

(b)

includes the assignee of an application, if the assignment has been effected under section 82; and

(c)

in sections 134G, 134H, and 134K, means the applicant for a search warrant; and

(d)

in section 134U means the applicant for the order referred to in that section

application

(a)

means an application for the registration of a trade mark; and

(b)

includes an application for the registration of a series of trade marks

assignment means assignment by the acts of the parties concerned

certification trade mark means a sign capable of—

(a)

being represented graphically; and

(b)

distinguishing, in the course of trade,—

(i)

goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic from goods not so certified; or

(ii)

services certified by any person in respect of quality, accuracy, performance, or other characteristic from services not so certified

chief executive,—

(a)

in subpart 3 of Part 4 (border protection measures), has the meaning set out in section 135; and

(b)

in the rest of this Act, means the chief executive of the Ministry

claimant has the meaning set out in section 135

collective association means a body (whether incorporated or not) that has or is able to have members, and is—

(a)

constituted for the joint benefit of its members for the time being; and

(b)

so constituted that its membership at any time can be ascertained

collective trade mark means a sign capable of—

(a)

being represented graphically; and

(b)

distinguishing the goods or services of members of the collective association that is the owner of the sign from those of persons who are not members of the collective association

Commissioner

(a)

means the Commissioner of Trade Marks; and

(b)

to avoid doubt, includes an Assistant Commissioner of Trade Marks

condition includes a limitation of the exclusive right to use a trade mark given by the registration of the trade mark, including a limitation of that right as to—

(a)

mode of use:

(b)

use in relation to goods to be sold or otherwise traded in any place within New Zealand:

(c)

use in relation to services to be provided within New Zealand:

(d)

use in relation to goods to be exported to any market outside New Zealand

control of the Customs has the meaning set out in section 135

convention country, in any provision of this Act, means an entity for the time being declared by an order under section 200 to be a convention country for the purposes of that provision

convention country application means an application for the registration of a trade mark that is made in a convention country (whether before or after it became a convention country) and that is, in accordance with the—

(a)

terms of a treaty between 2 or more convention countries, equivalent to an application made in any one of those convention countries; or

(b)

law of any convention country, equivalent to an application made in that convention country

court

(a)

means the High Court; and

(b)

for the purposes of sections 126 to 134, and 134T to 134V, includes the District Court or a Judge of that court

Customs officer has the meaning set out in section 135

deceased owner

(a)

means a registered owner of any trade mark who has died, whether before or after the commencement of this Act; and

(b)

includes an applicant for the registration of a trade mark who has died before it is registered, whether before or after the commencement of this Act

deemed date of registration means,—

(a)

in the case of a trade mark to which section 36 applies, the date of the application in the convention country (subject to any enactment relating to international arrangements):

(b)

in any other case, the date of the application

document, for the purposes of subpart 2A of Part 4 and sections 155B and 155D to 155F, means—

(a)

any material, whether or not it is signed or otherwise authenticated, that bears symbols (including words and figures), images, or sounds or from which symbols, images, or sounds can be derived, and includes—

(i)

a label, marking, or other writing that identifies or describes a thing of which it forms a part, or to which it is attached:

(ii)

a book, map, plan, graph, or drawing:

(iii)

a photograph, film, or negative; and

(b)

information electronically recorded or stored, and information derived from that information

infringing goods, in relation to a registered trade mark, are goods that bear, or goods the packaging of which bears, a sign that is identical with or similar to the registered trade mark and—

(a)

the application of the sign to the goods or their packaging is an infringement of the registered trade mark; or

(b)

the sign has been used in relation to the goods or their packaging in a way that infringes the registered trade mark

infringing material, in relation to a registered trade mark, means material that bears a sign that is identical with or similar to the registered trade mark and either the sign is—

(a)

used for labelling or packaging goods, as a business paper, or for advertising goods or services, in a way that infringes the registered trade mark; or

(b)

intended to be used in a way that would infringe the registered trade mark

infringing object, in relation to a registered trade mark, means an object that is—

(a)

specifically designed or adapted for making copies of a sign that is identical or similar to the registered trade mark; and

(b)

in the possession, custody, or control of a person who knows or has reason to believe that the object has been or is to be used to produce infringing goods or material

infringing sign has the meaning set out in section 135

International Bureau means the International Bureau of the World Intellectual Property Organization

licensee, in relation to a trade mark, means a person whose use of the trade mark is authorised by, and subject to the control of, the owner of the trade mark

Madrid Protocol means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989, as amended from time to time

member,—

(a)

in relation to a collective association, means a member of the association; and

(b)

in relation to a collective trade mark, means a member of the collective association that is the owner of the collective trade mark

Ministry means the department of State that, with the authority of the Prime Minister, is responsible for the administration of this Act

Nice Agreement means the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks adopted at Nice on 15 June 1957, as amended from time to time

Nice Classification means the classification of goods and services for the registration of marks published from time to time under the Nice Agreement

owner,—

(a)

in relation to a registered trade mark that is not a certification trade mark or a collective trade mark, means the person in whose name the trade mark is registered; and

(b)

in relation to a collective trade mark that is registered, means the collective association in whose name the trade mark is registered; and

(c)

in relation to a certification trade mark that is registered, means the person who certifies the goods or services to which the certification trade mark relates; and

(d)

in relation to an unregistered trade mark, means the person who owns all of the rights in the mark

Paris Convention means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time

protected international trade mark (New Zealand) means a trade mark that is entitled to protection in New Zealand under the Madrid Protocol

qualified person, in relation to a deceased owner, means a person who satisfies the Commissioner—

(a)

that he or she has obtained or is entitled to obtain probate of the will of the deceased owner or letters of administration in his or her estate in the place where the deceased owner was domiciled at his or her death, or that he or she is the legal representative of the deceased owner in that place:

(b)

that probate of the will of the deceased owner or letters of administration in his or her estate have not been granted or resealed in New Zealand:

(c)

that the interests of the creditors of the deceased owner, and of all persons beneficially interested under his or her will or on his or her intestacy, will be adequately safeguarded if the Commissioner registers the qualified person as the owner of the trade mark

register means the register of trade marks kept under section 181

registered geographical indication has the same meaning as in section 7(1) of the Geographical Indications (Wine and Spirits) Registration Act 2006

registered trade mark means a trade mark that is on the register

regulations means, except in sections 54 to 56, 63, 79, and 80, regulations in force under this Act

series of trade marks means a number of trade marks for the same goods or description of goods or the same services or description of services (as the case may be) that—

(a)

resemble each other in their material particulars; and

(b)

differ only in respect of 1 or more of the following matters:

(i)

statements of the goods or services for which they are, or are proposed to be, used:

(ii)

statements of number, price, quality, or names of places:

(iii)

other matters of a non-distinctive character that do not substantially affect the identity of the trade marks:

(iv)

colour

sign includes—

(a)

a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word; and

(b)

any combination of signs

specification means the goods or services specified on the application for the registration of the trade mark in relation to which the registered trade mark is to be used or is proposed to be used

trade mark

(a)

means any sign capable of—

(i)

being represented graphically; and

(ii)

distinguishing the goods or services of one person from those of another person; and

(b)

includes,—

(i)

except in section 85, a certification trade mark; and

(ii)

except in section 85, a collective trade mark

transmission means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer that is not assignment

TRIPS Agreement means the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement, as revised or amended from time to time

working day means a day of the week other than—

(a)

Saturday, Sunday, Good Friday, Easter Monday, Anzac Day, the Sovereign’s birthday, Labour Day, and Waitangi Day; and

(b)

the day observed in the appropriate area as the anniversary of the province of which the area forms part; and

(c)

a day in the period that commences with 25 December in any year and,—

(i)

except in section 171, ends with 2 January in the following year; or

(ii)

in section 171, ends with 15 January in the following year; and

(d)

if 1 January in any year falls on a Friday, the following Monday; and

(e)

if 1 January in any year falls on a Saturday or a Sunday, the following Monday and Tuesday; and

(f)

if Waitangi Day or Anzac Day falls on a Saturday or a Sunday, the following Monday

writing includes the—

(a)

recording of words in a permanent and legible form; and

(b)

recording of words by electronic means that can be retrieved and read; and

(c)

display of words by any form of electronic or other means of communication that is subsequently recorded by electronic means that can, by any means, be retrieved and read

WTO Agreement means the World Trade Organisation Agreement signed in Marrakesh in 1994, as revised or amended from time to time.

(2)

In the case of an entity that is a convention country but is not a State, part of a State, or a territory for whose international relations a State is responsible, a reference in this Act to an application for protection in a country must be read as a reference to an application for protection under the rules of the entity.

Compare: 1953 No 66 s 2(1), (4)

Section 5(1) applicant paragraph (b): amended, on 16 September 2011, by section 4(2) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) applicant paragraph (c): inserted, on 16 September 2011, by section 4(3) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) applicant paragraph (d): inserted, on 16 September 2011, by section 4(3) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) chief executive: replaced, on 16 September 2011, by section 4(4) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) court: replaced, on 16 September 2011, by section 4(5) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) court paragraph (b): amended, on 1 March 2017, by section 261 of the District Court Act 2016 (2016 No 49).

Section 5(1) document: inserted, on 16 September 2011, by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) geographical indication: repealed, on 27 July 2017, by section 63 of the Geographical Indications (Wine and Spirits) Registration Act 2006 (2006 No 60).

Section 5(1) International Bureau: inserted, on 16 September 2011, by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) licensee: replaced, on 16 September 2011, by section 4(6) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) Madrid Protocol: inserted, on 16 September 2011, by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) Ministry: inserted, on 16 September 2011, by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) Nice Agreement: inserted, on 16 September 2011, by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) Nice Classification: inserted, on 16 September 2011, by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) owner paragraph (d): amended, on 16 September 2011, by section 4(7) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) permitted use: repealed, on 16 September 2011, by section 4(8) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) protected geographical indication: repealed, on 27 July 2017, by section 63 of the Geographical Indications (Wine and Spirits) Registration Act 2006 (2006 No 60).

Section 5(1) protected international trade mark (New Zealand): inserted, on 16 September 2011, by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) registered geographical indication: inserted, on 27 July 2017, by section 63 of the Geographical Indications (Wine and Spirits) Registration Act 2006 (2006 No 60).

Section 5(1) series of trade marks: replaced, on 16 September 2011, by section 4(9) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) specified goods: repealed, on 27 July 2017, by section 63 of the Geographical Indications (Wine and Spirits) Registration Act 2006 (2006 No 60).

Section 5(1) trade mark paragraph (b): replaced, on 16 September 2011, by section 4(10) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 5(1) working day paragraph (e): replaced, on 1 January 2014, by section 8 of the Holidays (Full Recognition of Waitangi Day and ANZAC Day) Amendment Act 2013 (2013 No 19).

Section 5(1) working day paragraph (f): inserted, on 1 January 2014, by section 8 of the Holidays (Full Recognition of Waitangi Day and ANZAC Day) Amendment Act 2013 (2013 No 19).