66 Grounds for revoking registration of trade mark

(1)

The registration of a trade mark may be revoked on any of the following grounds:

(a)

that at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered:

(b)
[Repealed]

(c)

that, in consequence of acts or inactivity of the owner, the trade mark has become a common name in general public use for a product or service in respect of which it is registered:

(d)

that—

(i)

the article or substance was formerly manufactured under a patent or the service was formerly a patented process; and

(ii)

a period of 2 years or more has elapsed since the expiry of the patent; and

(iii)

the word is or the words are the only practicable name or description of the article, substance, or service:

(e)

that, in consequence of the trade mark’s use by the owner or with the owner’s consent in relation to the goods or services in respect of which the trade mark is registered, the trade mark is likely to deceive or confuse the public, for instance as to the nature, quality, or geographical origin of those goods or services.

(1A)

For the purposes of subsection (1)(a), continuous period means a period that commences from a date after the actual date of registration and continues uninterrupted up to the date 1 month before the application for revocation.

(2)

However, despite subsection (1), a trade mark may not be revoked for its non-use if its non-use is due to special circumstances that are outside the control of the owner of the trade mark.

(3)

The registration of a trade mark must not be revoked on the ground in subsection (1)(a) if that use is commenced or resumed after the expiry of the 3-year period and before the application for revocation is made.

(4)

Any commencement or resumption of use referred to in subsection (3) after the expiry of the 3-year period but within the period of 1 month before the making of the application for revocation must be disregarded unless preparation for the commencement or resumption began before the owner became aware that the application may be made.

Compare: 1953 No 66 s 35; Trade Marks Act 1998 s 22(1), (5) (Singapore)

Section 66(1)(a): replaced, on 16 September 2011, by section 7(1) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 66(1)(b): repealed, on 16 September 2011, by section 7(1) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 66(1A): inserted, on 16 September 2011, by section 7(2) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 66(3): amended, on 16 September 2011, by section 7(3)(a) of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 66(3): amended, on 16 September 2011, by section 7(3)(b) of the Trade Marks Amendment Act 2011 (2011 No 71).