Trade Marks Act 2002

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Reprint as at 16 December 2017

Trade Marks Act 2002

Public Act		2002 No 49
Date of assent		4 December 2002
Commencement		see section 2

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.

This Act is administered by the Ministry of Business, Innovation, and Employment.

1	Title
	Part 1 Preliminary
2	Commencement
3	Purposes
4	Overview
5	Interpretation
6	Meaning of use of sign
7	Meaning of use of trade mark
8	Act binds the Crown
	Part 2 Registrability of trade marks
	Subpart 1—Preliminary
	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 geographical indication must not be registered in certain circumstances
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
26	Exceptions
	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
	Subpart 1—Preliminary
31	Classification of trade marks
	Subpart 2—Applications
	General
32	Application: how made
33	Joint applications
	Priority of applications
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
	Amendment of application
37	Withdrawal, etc, of application
38	When Commissioner or court may amend application
	Acceptance or rejection of application
39	Examination of application
40	Acceptance of application
41	Applicant must be notified of non-complying application
42	Revocation of acceptance of application
43	Rejection of application
44	Abandonment 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 Intellectual Property Office of New Zealand
	Subpart 6—When registration of trade mark ceases
	Duration of registration
57	Duration of registration
	Renewal of registration
58	Renewal of registration
59	Notice of pending expiration of registration of trade mark
60	Status of trade mark removed from register for non-payment of renewal fee
60A	Status of geographical indication 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
	Rectification of register
76	Rectification or correction of register
	Subpart 7—Other matters
	Alteration in relation to registered trade mark
77	Alteration of registered trade mark not permitted
78	Alteration of register
78A	Alteration of register concerning certain inconsistent information
	Alteration of certification trade mark regulations
79	Alteration of certification trade mark regulations
80	Advertisement of application for alteration of regulations
	Assignment or transmission
81	Commissioner’s certificate that relates to certain assignments or transmissions [Repealed]
82	Registration of title to trade mark
	Licensees [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]
	Part 4 Legal proceedings
	Subpart 1—Civil proceedings for infringement
	How Act affects other rights
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
98A	No infringement through use of registered geographical indication
	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
	Unjustified proceedings
105	Unjustified 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
112	Directions for service
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
	Preliminary
117	When criminal proceedings may be commenced
118	Application of Sentencing Act 2002
119	Liability of officers of body corporate
	Offences and penalties
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
125	Penalties for offences
	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
130	Directions for service
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 constable 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
134K	Retention of documents
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
	Powers of Police
134ZB	Powers of Police
	Miscellaneous
134ZC	Privilege against self-incrimination
134ZD	Other privileges
134ZE	Disclosure of information
134ZF	No liability if functions performed or powers exercised in good faith
	Subpart 3—Border protection measures
	Interpretation
135	Interpretation
	Notice of infringing sign
136	Application of sections 137 to 141
137	Notice may be given to chief executive
138	Contents of notice
139	Chief executive must accept or decline notice
139A	Chief executive may suspend accepted notice
139B	Notice of suspension
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
147	Notice of 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
154	Powers of court
	Inspection of goods that bear infringing sign
155	Inspection of goods
	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
155I	Other privileges
155J	Offences
	Immunity
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
	Subpart 4—Miscellaneous
	Application to Commissioner or court?
158	Application to Commissioner or court?
	Appearance of Commissioner
159	Commissioner’s appearance in certain proceedings
	Evidence
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
165	Certificate of validity
	Costs
166	Costs
167	Security for costs
168	No costs on appeal against refusal to certify or to authorise use
169	Costs of Commissioner in proceedings before court
	Appeals
170	Appeals in relation to Commissioner’s decisions
171	Notice of appeal
172	Hearing of appeal
173	Determination of appeals
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
175D	Liability of Commissioner and others
176	Hearing before exercise of Commissioner’s discretion
	Subpart 2—Advisory committee
177	Advisory committee
178	Function of advisory committee
179	Membership of advisory committee
180	Advisory committee may regulate own procedure
	Subpart 3—Register of trade marks
	General
181	Register of trade marks
182	Contents of register
183	No notices of trusts may be entered in register
	Search of register
184	Search of register
	Offences relating to register
185	Offence to make false entry in register
186	Offences relating to false representation of trade mark
	Subpart 4—Miscellaneous
	No compensation
187	No compensation for diminution in rights attaching to trade mark
	Intellectual Property Office of New Zealand
188	Opening hours of Intellectual Property Office of New Zealand
189	Closing of Intellectual Property Office of New Zealand at short notice
	Personal representatives
190	Recognition of agents
191	Declarations, etc, on behalf of certain persons
	Substitution
192	Substitution of person other than applicant generally
193	Substitution of person other than opponent on notice of opposition
	Amendment of other documents
194	Amendment of documents other than application
	Fees
195	Fees
	Service of notices
196	Application of section 197
197	Method of service of notices
	Annual report [Repealed]
198	Annual report by Commissioner of Patents [Repealed]
	Regulation-making powers
199	Regulations
199A	Regulations: Madrid Protocol
200	Orders in Council relating to convention countries
	Amendments
201	Acts amended
	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
	Schedule Acts amended
	Reprint notes

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