- Trade Marks Act 2002
- 1 Title
- Part 1—Preliminary
- Part 2—Registrability of trade marks
- Subpart 1—Preliminary
- Subpart 2—Absolute grounds for not registering trade mark
- Subpart 3—Relative grounds for not registering trade mark
- Registrability of trade mark that contains certain words
- Registrability of trade mark that contains person's name
- Registrability of identical or similar trade marks
- 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 countr
- 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
- Subpart 2—Applications
- General
- Priority of applications
- Amendment of 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
- Subpart 3—Opposition to application
- Subpart 4—Registration of trade mark
- Subpart 5—Additional matters that relate to certification trade marks
- Subpart 6—When registration of trade mark ceases
- Duration of registration
- Renewal of registration
- Voluntary cancellation of registration of trade mark
- Mandatory cancellation or alteration of registration of trade mark
- Revocation of registration of trade mark
- Disclaimer of use of trade mark
- Invalidity of registration of trade marks
- Rectification of register
- Alteration in relation to registered trade mark
- Alteration of certification trade mark regulations
- Assignment or transmission
- Licensees
- Part 4—Legal proceedings
- Subpart 1—Civil proceedings for infringement
- How Act affects other rights
- Acts amounting to infringement
- 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 where certain connection in course of trade
- 98 When owner or licensee consents to use of registered trade mark
- When infringement proceedings may be brought
- Who may apply for relief for infringement of registered trade mark
- Unjustified proceedings
- Types of relief available for infringement
- 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 objec
- 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
- Preliminary
- 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
- 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 3—Border protection measures
- Interpretation
- Notice of infringing sign
- Investigation where notice of infringing sign
- Chief executive's determination
- Detention of goods bearing infringing sign
- Proceedings relating to goods bearing infringing sign
- Inspection of goods that bear infringing sign
- Delegation of chief executive's powers, duties, and functions
- Subpart 4—Miscellaneous
- Application to Commissioner or Court?
- Appearance of Commissioner
- 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
- Appeals
- Subpart 1—Civil proceedings for infringement
- Part 5—Administrative provisions and miscellaneous
- Subpart 1—Commissioner and Assistant Commissioners of Trade Marks
- Subpart 2—Advisory committee
- Subpart 3—Register of trade marks
- Subpart 4—Miscellaneous
- No compensation
- Patent Office
- Personal representatives
- Substitution
- Amendment of other documents
- Fees
- Service of notices
- Annual report
- Regulation-making powers
- Amendments
- 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 1
- 208 Status of trade marks registered before commencement of Act
- 209 Status of notes, etc, on register before commencement of Act
- 1 Title
- Schedule
Trade Marks Act 2002
Public Act 2002 No 49
Date of assent 4 December 2002
The Parliament of New Zealand enacts as follows:
1 Title
This Act is the Trade Marks Act 2002.
Part 1—Preliminary
2 Commencement
(1) This Act (except sections 177 to 180, 199, and 200) comes into force on a date to be appointed by the Governor-General by Order in Council.
(2) Sections 177 to 180, 199, and 200 come into force on the day after the date on which this Act receives the Royal assent.
3 Purposes
The purposes of this Act are to—
(a) more clearly define the scope of rights protected by registered trade marks; and
(b) simplify procedures for registering a trade mark in order to reduce costs to applicants and to reduce business compliance costs generally; and
(c) address Maori concerns relating to the registration of trade marks that contain a Maori sign, including imagery and text; and
(d) deter counterfeit activity in relation to registered trade marks in New Zealand; and
(e) ensure that New Zealand's trade mark regime takes account of international developments.
4 Overview
In this Act,—
(a) this Part deals with preliminary matters, including interpretation and the application of this Act to the Crown:
(b) the main rights attaching to a registered trade mark (for example, the exclusive right to use the registered trade mark) are set out in section 10:
(c) when a trade mark is registrable is set out in section 13. Other provisions relating to the registrability of trade marks are set out in sections 14 to 30:
(d) the process for registering a trade mark is contained in Part 3:
(e) remedies and offence provisions relating to the infringement of a registered trade mark, border protection measures concerning an infringing sign that is applied to goods in an overseas country, and general provisions about legal proceedings and appeals under this Act, are set out in Part 4:
(f) Part 5 contains provisions about the Commissioner, the register of trade marks, and an advisory committee that has the function of advising the Commissioner whether the proposed registration of a trade mark that is, or appears to be, derivative of a Maori sign, including imagery and text, is offensive to Maori.
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
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 has the meaning set out in section 135
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 1 of those convention countries; or
(b) law of any convention country, equivalent to an application made in that convention country
Court means the High 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
geographical indication has the same meaning as in section 2(1) of the Geographical Indications Act 1994
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