Trade Marks Regulations 2003

Reprint as at 5 April 2018

Coat of Arms of New Zealand

Trade Marks Regulations 2003

(SR 2003/187)

Silvia Cartwright, Governor-General

Order in Council

At Wellington this 4th day of August 2003

Present:
Her Excellency the Governor-General in Council

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.

These regulations are administered by the Ministry of Business, Innovation, and Employment.

Pursuant to section 199 of the Trade Marks Act 2002, Her Excellency the Governor-General, acting on the advice and with the consent of the Executive Council, makes the following regulations.

Contents

1Title
2Commencement
3Interpretation
4Documents must be in English or Māori
5Form of documents filed in proceeding
6Signatures
7Electronic documents
8Information or documents must be given electronically through case management facility
9Document filed when received in proper form
10Filing date
11Request to amend documents
11ARequest to amend pleadings
12Notice to Commissioner of application to court
13Notification of address for service
14Notification of business or residential address [Revoked]
15Notification of communication address
16Change of address
17Notice of address or change of address
17ACommissioner may require address for service to be filed
18Sufficiency of address
19Definition of agent
20Agent may act on behalf of principal for purposes of regulations
21Commissioner may serve and give notices to agent
22Commissioner may require principal of agent to file authority with Commissioner in certain cases
23Commissioner may refuse to recognise person as agent
24Commissioner must notify refusal to recognise
25Notice to Commissioner of revocation or alteration of authority
25ANotice of revocation of authority may be given by agent
26Commissioner may require parties to attend case management conference
27Parties must comply with Commissioner’s directions at case management conference
28Commissioner may halt proceeding
29Substitution of parties
30Intervention by third party
31Commissioner may require production of documents
31ACommissioner may consolidate proceedings
32Commissioner may extend time
33Party filing evidence must copy evidence to opposite party
34Evidence out of time
35Application for permission to file evidence out of time
35ARight to file evidence in reply if evidence in chief permitted out of time
35BEvidence from another proceeding
35CCommissioner may require parties to use best endeavours to reach confidentiality agreement
36Vexatious applications
37Application for preliminary advice or for search of register
38Information required for application for preliminary advice or search of register
39Application for preliminary advice or search of register for goods and services in more than 1 class
40Refund of fee if identical or similar trade mark subsequently identified
41Mandatory requirements for application for registration
42Information required in application for registration on filing
43Additional classes may be added until acceptance
44Information that must be supplied before acceptance of application
45Commissioner may request further information
46Claim for convention priority must be made when application filed
47Information required for claim for convention priority
48Registration of trade mark including name or description that may vary in use
49Division of trade mark application
50Application for division
51Information required for application for division
52Effect of division
53Division instead of striking out
54When merger is allowed
55Application for merger
56Information required for application for merger
57Requirements for certification trade mark application
58Applicant may modify documents
59Requirements for collective trade mark application
60Application for registration without production of letters of administration or probate
61Deadline for response to notice of non-compliance
62Applicant may request extension of time to comply
62AApplicant for registration of trade mark entitled to 1 extension in certain circumstances
63Applicant must notify Commissioner of related proceeding
64Applicant must notify Commissioner of outcome of related proceeding
65Notification of withdrawal of application for registration
66Request for alteration of application
67Commissioner must notify applicant of intention to reject alteration
68Commissioner must hold hearing
69Commissioner must notify applicant of intention to reject application
70Commissioner must hold hearing
71Commissioner must notify applicant of intention to revoke acceptance
72Commissioner must hold hearing
73Requirements for notice of opposition
74Information required in notice of opposition
75Time for filing notice of opposition
76Notice of opposition sent in time if all parties agree
77Commissioner must send copy of notice to applicant for registration
78Commissioner must notify each opponent that notice of opposition filed
79Time for sending counter-statement
80Information required in counter-statement
81Commissioner must send copy of counter-statement to opponent
82Opponent must file evidence
83Discontinuance of opposition
84Applicant may file evidence
85Evidence in reply
86Application for rectification by Commissioner
87Information required for application for rectification
88Owner may oppose rectification
89Requirements for counter-statement to application for rectification
90Applicant for rectification must file evidence
91Discontinuance of application
92Owner may file evidence
93Applicant’s evidence in reply
94Application to Commissioner for revocation
95Information required for application for revocation
96Owner or licensee may oppose revocation by filing counter-statement and evidence of use
97Requirements for counter-statement to application for revocation for non-use
98Applicant for revocation for non-use must file evidence
99Owner or licensee may file evidence
100Applicant may file evidence in reply
101Owner or licensee may oppose revocation by filing counter-statement
102Requirements for counter-statement to application for revocation on grounds other than non-use
103Applicant for revocation on grounds other than non-use must file evidence
104Person opposing may file evidence in support of registration
105Applicant may file evidence in reply
106Application to Commissioner for declaration of invalidity
107Information required for application for declaration of invalidity
108Owner may oppose application for declaration of invalidity by filing counter-statement
109Requirements for counter-statement to application for declaration of invalidity
110Applicant for declaration of invalidity must file evidence
111Owner may file evidence
112Applicant may file evidence in reply
113Voluntary cancellation
114Application by aggrieved person for cancellation or alteration
115Information required for application for cancellation or alteration
116Owner may oppose cancellation or alteration
117Requirements for counter-statement to application for cancellation or alteration
118Applicant for cancellation or alteration must file evidence
119Discontinuance of application
120Owner may file evidence
121Applicant’s evidence in reply
122Form of hearing
123Hearing before exercise of Commissioner’s discretion
124Hearing in certain proceedings
125Notice of hearing by appearance
126Hearing fee
127Venue for hearing by appearance
128Conduct of hearing by appearance
129Additional contents of register
130Certificate of registration
131Certified copy of entry in register
131AOwner of trade mark may apply for division of registration
131BInformation required for application for division
131CEffect of division of registration
132Notice of expiry
133Application for renewal
134Commissioner may specify conditions for restoration to register
135Request for alteration of owner’s name or address
136Request to strike out goods or services, or classes of goods or services
137Request for entry, alteration, or removal of memorandum on register
138Notice of voluntary disclaimer of trade mark by owner
139Application for conversion of specification
140Information required for application for conversion
141Applicant may nominate registration in additional classes
142Proposed form of conversion
142AApplication
142BConversion process
142CWhere owner fails to respond
142DResponse by owner
143Request for Commissioner’s certificate [Revoked]
144Information that must be contained in request for certificate [Revoked]
145Application to register title to trade mark
146Information required for application to register title to trade mark
146AForm of warrant of appointment of enforcement officer
146BForm of warrant to search place or thing
146CForm of order to produce documents under section 134Y of Act
[Revoked]
[Revoked]
147Application for registration of licensee [Revoked]
148Information required for application for registration of licensee [Revoked]
[Revoked]
149Application for alteration of registration of licensee [Revoked]
150Information required for application for alteration of registration of licensee [Revoked]
[Revoked]
151Application for cancellation of registration of licensee [Revoked]
152Information required for application for cancellation of registration of licensee [Revoked]
153Owner must send licensee copy of application to cancel [Revoked]
154Intervention by owner or licensee [Revoked]
155Commissioner’s powers on application for cancellation or alteration of registration of licensee [Revoked]
156Form of section 137 notice
157Evidence in support of claim
158Notice of assignment, transmission, and other matters
159Security and indemnity
160Disposal of forfeited goods
160AForm of notice to produce documents concerning goods in control of Customs
160BForm of notice to appear and answer questions concerning goods in control of Customs
160CForm of application by Customs officer for order to produce documents
160DForm of order to produce documents under section 155E of Act
160EForm of application by Customs officer for search warrant
160FForm of warrant to Customs officer to search place or thing
161Advertisement by Commissioner
162Commissioner must notify decision
163Commissioner must give reasons for decision if required
164Commissioner may waive requirement for information
165Trade Marks Regulations 1954 revoked
166Trade Marks (Border Protection and Transitional Applications) Regulations 1994 revoked
167Amount of fees
168Commissioner may refuse to take step before fee paid
169Requirement that prescribed fee accompany document to be filed
170Form of payment
171Currency
Gazette Information
Reprint notes