96 No infringement for certain continuous use of unregistered trade mark

(1)

A registered trade mark (trade mark A) is not infringed by the use of an unregistered trade mark (trade mark B) if—

(a)

trade mark B is identical with or similar to trade mark A and is used in relation to any goods or services that are identical with or similar to any goods or services in respect of which trade mark A is registered; and

(b)

trade mark B was used in relation to those goods or services in the course of trade by the owner or a predecessor in title of the owner before whichever is the earlier of the following dates:

(i)

the date of application in New Zealand for the registration of trade mark A; or

(ii)

the date that the owner, or a predecessor in title, first used trade mark A; and

(c)

trade mark B has been used continuously in relation to those goods and services in the course of trade by the owner’s predecessors in title (if any) and the owner since that date.

(2)

Nothing in this Act entitles the owner of a registered trade mark to—

(a)

interfere with or restrain the use by any person of a trade mark identical or similar to it in relation to goods or services in relation to which that person or the owner’s predecessor in title had continuously used that trade mark from a date prior to the commencement of the Trade Marks Amendment Act 1994 if, before that date, the use of that trade mark by that person did not infringe the right to the use of the first-mentioned trade mark given by the registration; or

(b)

object (if use is proved) to that person being put on the register for that identical or similar trade mark in respect of those goods or services or similar goods or services.

Compare: 1953 No 66 s 11; Trade Marks Act 1998 s 28(2) (Singapore)

Section 96(1)(b): replaced, on 16 September 2011, by section 14 of the Trade Marks Amendment Act 2011 (2011 No 71).

Section 96(1)(c): inserted, on 16 September 2011, by section 14 of the Trade Marks Amendment Act 2011 (2011 No 71).