WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/NZL/T/4 
19 July 2004 
 (04-3091) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English/ 
 anglais/ 
 inglés 
 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
 
NEW ZEALAND 
 
 The present document reproduces the text1 of the Trade Marks Act 2002, as notified by New 
Zealand under Article 63.2 of the Ag reement (see documen t IP/N/1/NZL/4). 
 
 Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA 
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
NOUVELLE-ZÉLANDE 
 
 Le présent document contient le texte
1 de la Loi de 2002 sur les marques de fabrique ou de 
commerce, notifiée par la Nouvelle-Z élande au titre de l'article 63:2 de l'Accord (voir le document 
IP/N/1/NZL/4). 
 
 
Consejo de los Aspectos de los Derechos de Propiedad Intelectual relacionados con el Comercio  
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PÁRRAFO 2 
DEL ARTÍCULO 63 DEL ACUERDO 
 
NUEVA ZELANDIA 
  En el presente documento se reproduce el texto
1 de la Ley de Marcas de Fábrica o de 
Comercio de 2002, que Nueva Zelandia ha notific ado en virtud del párrafo 2 del artículo 63 del 
Acuerdo (véase el documento IP/N/1/NZL/4). 
                                                      
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/NZL/T/4 
Page 2  
 
 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 righ ts 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 pr ovisions 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:  IP/N/1/NZL/T/4 
 Page 3 
 
 
 (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 regist ration 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 pers on 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 IP/N/1/NZL/T/4 
Page 4  
 
 (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 expor ted 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 coun try (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  IP/N/1/NZL/T/4 
 Page 5 
 
 
  
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 
(b) intended to be used in a way that would infringe the registered trade mark 
 
infringing object , in relation to a registered trade mark, means an object that is— 
(a) specifically designed or adapted for ma king copies of a sign that is identical or 
similar to the registered trade mark; and 
(b) in the possession, custody, or cont rol of a person who knows or has reason to 
believe that the object has been or is to be used to produce infringing goods or 
material 
 
infringing sign  has the meaning set out in section 135 
 
licensee , in relation to a trade mark, means a person who is for the time being 
registered as a licensee of the trade mark in respect of any of the goods or services for 
which the trade mark is registered or who is a registered user of the trade mark under 
the Trade Marks Act 1953 
 
member ,— 
(a) in relation to a collective association, means a member of the association; and 
(b) in relation to a collective trade mark, means a member of the collective 
association that is the owner of the collective trade mark 
 owner ,— 
(a) in relation to a registered trade mark that is not a certification trade mark or a 
collective trade mark, means the person in whose name the trade mark is 
registered; and 
(b) in relation to a collective trade mark that is registered, means the collective 
association in whose name the trade mark is registered; and 
(c) in relation to a certification trade mark that is registered, means the person 
who certifies the goods or services to which the certification trade mark 
relates; and 
(d) in relation to a an unregistered trade mark, means the person who owns all of 
the rights in the mark 
 IP/N/1/NZL/T/4 
Page 6  
 
 Paris Convention means the Convention for the Protection of Industrial Property 
signed at Paris on 20 March 1883, as revised or amended from time to time 
 
permitted use  means use— 
(a) of a trade mark by a licensee of the trade mark in relation to any goods or 
services— 
(i) with which the licensee is connected in the course of trade; and (ii) in respect of which the trade mark is registered; and 
(b) that complies with any conditions to which the licensee's registration is subject 
 
protected geographical indication  means a geographical indication that is entered on 
the Register of Protected Geographical Indi cations established under section 8 of the 
Geographical Indications Act 1994 
 
qualified person , in relation to a deceased owner, means a person who satisfies the 
Commissioner— 
(a) that he or she has obtained or is entitled to obtain probate of the will of the 
deceased owner or letters of administration in his or her estate in the place 
where the deceased owner was domiciled at his or her death, or that he or she 
is the legal representative of the deceased owner in that place: 
(b) that probate of the will of the deceased owner or letters of administration in his 
or her estate have not been granted or resealed in New Zealand: 
(c) that the interests of the creditors of the deceased owner, and of all persons 
beneficially interested under his or her w ill or on his or her intestacy, will be 
adequately safeguarded if the Commissi oner registers the qualified person as 
the owner of the trade mark 
 
register  means the register of trade marks kept under section 181 
 
registered trade mark  means a trade mark that is on the register 
 
regulations  means, except in sections 54 to 56 , 63, 79, and 80, regulations in force 
under this Act 
 
series of trade marks  means a number of trade marks for the same goods or 
description of goods or the same services or  description of services (as the case may 
be) that— 
(a) resemble each other in th eir material particulars; and 
(b) differ only in respect of— 
(i) statements of the goods or services for which they are, or are proposed 
to be, used; or 
(ii) statements of number, price, quality, or names of places; or 
(iii) other matters of a non-distinctiv e character that do not substantially 
affect the identity of the trade mark; or 
(iv) colour 
  IP/N/1/NZL/T/4 
 Page 7 
 
 
 sign includes— 
(a) a brand, colour, device, heading, label, letter, name, numeral, shape, signature, 
smell, sound, taste, ticket, or word; and 
(b) any combination of signs 
 
specification  means the goods or services specified on the application for the 
registration of the trade mark in relation to which the registered trade mark is to be used or is proposed to be used 
 
specified goods  has the same meaning as in section 2(1) of the Geographical 
Indications Act 1994 
 
trade mark — 
(a) means any sign capable of— 
(i) being represented graphically; and 
(ii) distinguishing the goods or services  of 1 person from those of another 
person; and 
(b) includes,— 
(i) except in sections 83 to 87, a certification trade mark; and 
(ii) except in sections 83 to 87, a collective trade mark 
 
transmission  means transmission by operation of law, devolution on the personal 
representative of a deceased person, and any other mode of transfer that is not 
assignment 
 
TRIPS Agreement  means the Agreement on Trade-related Aspects of Intellectual 
Property Rights set out in Annex 1C to the WTO Agreement, as revised or amended 
from time to time 
 
working day  means a day of the week other than— 
(a) Saturday, Sunday, Good Friday, Easter Monday, Anzac Day, the Sovereign's 
Birthday, Labour Day, and Waitangi Day; and 
(b) the day observed in the appropriate area  as the anniversary of the province of 
which the area forms part; and 
(c) a day in the period that commences with 25 December in any year and,— 
(i) except in section 171, ends with 2 January in the following year; or 
(ii) in section 171, ends with 15 January in the following year; and 
(d) if 1 January in any year falls on a Friday, the following Monday; and 
(e) if 1 January in any year falls on a Saturday or a Sunday, the following Monday 
and Tuesday 
 
writing  includes the— 
(a) recording of words in a permanent and legible form; and 
(b) recording of words by electronic means that can be retrieved and read; and 
(c) display of words by any form of electronic or other means of communication 
that is subsequently recorded by electronic means that can, by any means, be 
retrieved and read 
 IP/N/1/NZL/T/4 
Page 8  
 
 WTO Agreement  means the World Trade Organisation Agreement signed in 
Marrakesh in 1994, as revised or amended from time to time.  
(2) In the case of an entity that is a conventi on country but is not a State, part of a State, 
or a territory for whose international relations a State is responsible, a reference in this Act to 
an application for protection in a country must be read as a reference to an application for 
protection under the rules of the entity.  
6 Meaning of use of sign 
 In this Act, unless the context otherwise requires, every reference to— 
(a) the use of a sign in relation to goods is a reference to the use of the sign on, or 
in physical or other relation to, goods: 
(b) the use of a sign in relation to services is a reference to the use of the sign in 
relation to the provision or availability of services: 
(c) the use of a sign in relation to goods or services (as the case may be) includes 
a reference to the audible use of the sign in relation to goods or services. 
 
7 Meaning of use of trade mark 
(1) In this Act, unless the context otherwise requires, use, in relation to a trade 
mark, includes— 
(a) use in a form differing in elemen ts that do not alter the distinctive 
character of the trade mark in the form in which it was registered; and (b) applying the trade mark to goods or services or to materials for the 
labelling or packaging of goods or services in New Zealand solely for 
export purposes; and 
(c) the application in New Zealand of a trade mark to goods or services to 
be exported from New Zealand, and any other act done in New 
Zealand in relation to those goods or se rvices that, if done in relation to 
goods or services to be sold or otherwise traded in New Zealand, 
would constitute use of a trade mark in relation to those goods or services for which the use is material under this Act or at common law; 
and 
(d) the use of the trade mark by— 
(i) the owner; or 
(ii) if the owner is a collective association, a member of the 
collective association. 
 
(2) References in this Act to use of a trade mark by the owner includes use by a 
person other than the owner if that use is authorised by, and subject to, the 
control of the owner. 
 
(3) The use of the whole of a registered trade mark is also a use of any registered 
component part of a trade mark registered in the name of the same owner. 
 8 Act binds the Crown 
 This Act binds the Crown. 
  IP/N/1/NZL/T/4 
 Page 9 
 
 
 Part 2—Registrability of trade marks 
 
Subpart 1—Preliminary 
 
Nature of registered trade mark 
 
9 Nature of registered trade mark 
(1) A registered trade mark is personal property. 
(2) Equities in respect of a registered trade mark may be enforced in the same way 
as equities in respect of any other personal property. 
 
Rights that attach to registered trade marks 
 
10 Rights that attach to registered trade marks 
(1) The owner of a registered trade mark ha s, in relation to all or any of the goods 
or services in respect of which the trade mark is registered, the rights and 
remedies provided by this Act and, in particular, has the exclusive right to— (a) use the registered trade mark; and 
(b) authorise other persons to use the registered trade mark; and 
(c) assign or transmit the registered trade mark (either in connection with 
the goodwill of a business or not); and 
(d) give valid receipts for any consideration for any such assignment or 
transmission. 
 
(2) For the purposes of subsection (1)(a), a member of a collective association that 
owns a collective trade mark that is registered in respect of goods or 
services— 
(a) has, along with the collective association, the exclusive right to use the 
trade mark in respect of those goods or services; and 
(b) does not have the right to exclude any other members from using the 
trade mark in respect of goods produced or services provided by the 
other members. 
 
11 Additional matters that relate to rights attaching to registered trade marks 
 Subject to section 100, the rights referred to in section 10— 
(a) are subject to any conditions entered on the register in relation to the 
registered trade mark; and 
(b) accrue from the deemed date of registration of the trade mark; and 
(c) are conferred in respect of each of the registered trade mark's component parts 
that are registered as separate trade marks; and 
(d) are to be exercised by joint owners, if any, of the registered trade mark as if 
they were the rights of a single person. 
 
Rights that attach to application 
 
12 Rights that attach to application 
(1) An applicant may assign or transmit the applicant's application (whether made 
before or after the commencement of this Act). IP/N/1/NZL/T/4 
Page 10  
 
 (2) An application for registration of a trade mark is personal property. 
(3) Equities in respect of an application for registration of a trade mark may be 
enforced in the same way as equities in respect of any other personal property. 
 
Registrability of trade marks: general 
 
13 When trade mark registrable 
(1) If all the requirements set out in subsection (2) are met, a trade mark is 
registrable under this Act in respect of the following: 
(a) particular goods or services within 1 or more classes: 
(b) particular goods and services within 1 or more classes. 
(2) The following requirements must be met: 
(a) an application for the registration of the trade mark must be made in 
accordance with this Act: 
(b) all prescribed fees, if any, must be paid in respect of the application: 
(c) the Commissioner must be satisfied that there are no absolute or 
relative grounds set out in this Part that would prevent the registration of the trade mark. 
 14 Additional provisions that relate to registrability of certification trade marks 
 A certification trade mark in respect of goods or services— 
(a) may be registered in the name, as owner, of the person who certifies the goods 
or services; but 
(b) may not be registered in the name of  a person who carries on a trade in goods 
or in services of the kind certified. 
 
15 Additional provisions that relate to registrability of collective trade marks 
A collective trade mark may be registered in  the name of a collective association, as 
owner, in respect of goods produced by its members, services provided by its 
members, or both. 
 
16 Commissioner's preliminary advice rega rding distinctive character of trade 
mark (1) The Commissioner must, if required by a person who proposes to apply for the 
registration of a trade mark, advise the person whether, in the Commissioner's opinion, the trade mark has a distinctive character. 
(2) A person who is advised under subsection (1) that a trade mark has a 
distinctive character is entitled to be repaid any fee that the person paid on the 
filing of the application if,— 
(a) within 3 months after the Commissioner gave that advice, the person 
applies for the registration of the trade mark; and 
(b) the Commissioner rejects the application on the basis that the trade 
mark has no distinctive character. 
(3) A person entitled to a refund u nder subsection (2) must withdraw the 
application before the payment of that refund. 
  IP/N/1/NZL/T/4 
 Page 11 
 
 
 Subpart 2—Absolute grounds for not registering trade mark 
 
17 Absolute grounds for not registering trade mark: general 
(1) The Commissioner must not do any of the following things: 
(a) register as a trade mark or part of a trade mark any matter the use of 
which would be likely to deceive or cause confusion: 
(b) register a trade mark or part of a trade mark if— 
(i) its use is contrary to New Zealand law or would otherwise be 
disentitled to protection in any court: 
(ii) the Commissioner considers that its use or registration would 
be likely to offend a significant section of the community, 
including Maori: 
(iii) the application for the registration of the trade mark is made in 
bad faith. 
(2) Despite subsection (1)(b)(i), the Commis sioner may register a trade mark even 
if use of the trade mark is restrict ed or prohibited under the Smoke-free 
Environments Act 1990. 
 
Registrability of non-distinctive trade marks 
 
18 Non-distinctive trade mark not registrable 
(1) The Commissioner must not register— 
(a) a sign that is not a trade mark: 
(b) a trade mark that has no distinctive character: 
(c) a trade mark (unless the trade mark is a certification trade mark) that 
consists only of signs or indications that may serve, in trade, to 
designate the kind, quality, quantity, intended purpose, value, 
geographical origin, time of production of goods or of rendering of 
services, or other characteris tics of goods or services: 
(d) a trade mark that consists only of signs or indications that have become 
customary in the current language or in the bona fide and established 
practices of trade. 
 
(2) The Commissioner must not refuse to  register a trade mark under subsection 
(1)(b), (c), or (d) if, before the date of application for registration, as a result of 
either the use made of it or of any other circumstances, the trade mark has 
acquired a distinctive character. 
 
19 Relevance of colour to distinctive character of trade mark 
(1) In determining the distinctive character  of a trade mark, the Commissioner or 
the Court, as the case may be, must consider whether or not the trade mark is, 
or is to be, limited in whole or in part to 1 or more specified colours. 
(2) A trade mark that is, or is to be, registered without limitation of colour is, or 
will be, registered for all colours. 
 IP/N/1/NZL/T/4 
Page 12  
 
 20 Trade mark that contains protected geographical indication must not be 
registered 
 The Commissioner must not register a trade mark that— 
(a) contains a protected geographical indi cation in respect of specified goods; and 
(b) relates to specified goods that do not originate from the place indicated in the 
protected geographical indication. 
 
21 Trade mark that contains commonly  used chemical names must not be 
registered 
(1) The Commissioner must not register, in respect of a chemical substance or 
preparation, a trade mark that contains the commonly used and accepted name 
of any single chemical element or single chemical compound. 
(2) Subsection (1) does not apply to a word that is used to denote only a brand or 
make of the element or compound made by the owner or a licensee of the 
trade mark, together with a suitable name or description open to the public 
use. 
 
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 
The Commissioner may register a trade mark that contains the words “copyright”, 
“layout design”, “patent”, “patented”, “plant variety right”, “registered”, “registered 
design”, or “trade mark”, or any abbreviations of those words, or any similar words. 
 
Registrability of trade mark that contains person's name 
 
23 Registrability of trade mark that contains person's name 
If a person applies for registration of a sign as a trade mark and the sign contains the 
name or representation of a person, the Commissioner may require the written consent 
of— 
(a) that person unless the person died 10 years or more before the making of the 
application; or 
(b) the person's legal representative if— 
(i) the person died within 10 years before the making of the application; 
or 
(ii) the Commissioner thinks the person's consent cannot for any other 
reason be obtained. 
 24 Registrability of trade mark that co ntains representations of Royal Family 
The Commissioner must not register a trade mark that contains a representation of Her Majesty or any member of the Royal Family, or an imitation of any such 
representation, unless the applicant has obta ined the consent of Her Majesty or the 
relevant member of the Royal Family to the registration of the trade mark. 
  IP/N/1/NZL/T/4 
 Page 13 
 
 
 Registrability of identical or similar trade marks 
 25 Registrability of identical or similar trade mark  
(1) The Commissioner must not register a tr ade mark (trade mark A) in respect of 
any goods or services if— 
(a) it is identical to a trade mark (trade mark B) that belongs to a different 
owner and that is registered, or has priority under section 34, in respect of the same goods or services; or 
(b) it is similar to a trade mark (trade  mark C) that belongs to a different 
owner and that is registered, or has priority under section 34, in respect 
of the same goods or services or goods or services that are similar to 
those goods or services, and its use is likely to deceive or confuse; or 
(c) it is, or an essential element of it is, identical or similar to, or a 
translation of, a trade mark that is well known in New Zealand (trade 
mark D), whether through advertising or otherwise, in respect of those 
goods or services or similar goods or  services or any other goods or 
services if the use of trade mark A would be taken as indicating a connection in the course of trade be tween those other goods or services 
and the owner of trade mark D, and would be likely to prejudice the 
interests of the owner. 
(2) Section 26 overrides subsection (1). 
 
26 Exceptions 
 The Commissioner must register trade mark A if— 
(a) the owner of trade mark B, trade mark C, or trade mark D (as the case may 
require) consents to the registration of trade mark A; or 
(b) the Commissioner or the Court, as the case may be, considers that a case of 
honest concurrent use exists, or other special circumstances exist, that, in the 
opinion of the Court or the Commissioner, makes it proper for the trade mark 
to be registered subject to any conditions that the Court or the Commissioner may impose. 
 
Registrability of trade mark that contains flags 
 
27 Registrability of trade mark that contai ns representation of flag, etc, generally 
(1) If a person applies for registration of a sign as a trade mark and the sign 
includes a representation of the flag, ar morial bearing, insignia, orders of 
chivalry, or decorations of any entity, the Commissioner may require that the 
applicant obtain the written consent of the person who appears to the 
Commissioner to be entitled to consent to the registration and use of the sign 
as a trade mark. 
(2) Subsection (1) does not apply if section 28 or section 29 applies. 
 
28 Registrability of trade mark that contains flag, State emblems, etc, of convention 
country 
The Commissioner must not, without the aut horisation of the competent authorities of 
the country concerned, register a trade mark that contains a representation of— IP/N/1/NZL/T/4 
Page 14  
 
 (a) the flag of a convention country unless the Commissioner considers that the 
use of the flag in the manner proposed is  permitted without that authorisation; 
or 
(b) the armorial bearings or any other State emblem of a convention country that 
is protected under the Paris Convention or the TRIPS Agreement; or 
(c) an official sign or hallmark— 
(i) adopted by a convention country; and (ii) that indicates control and warranty in relation to goods or services of 
the same, or similar, kind as those goods or services in relation to 
which the trade mark is to be registered; and 
(iii) that is protected under the Paris Convention or the TRIPS Agreement. 
 
29 Registrability of trade mark that cont ains armorial bearings, etc, of certain 
international organisations 
(1) The Commissioner must not, without the authorisation of the international 
organisation concerned, register a trade mark that contains a representation of 
the armorial bearing, flag, or other emblem, or the abbreviation or name, of an international intergovernmental organisation of which 1 or more convention 
countries are members if the armorial bearing, flag, or other emblem, or the 
abbreviation or name, of the internati onal organisation concerned is protected 
under the Paris Convention or the TRIPS Agreement. 
(2) Despite subsection (1), the Commissioner may register a trade mark if the 
Commissioner considers that the use of the armorial bearing, flag, or other 
emblem, or the abbreviation or name, of the international organisation 
concerned in the manner proposed— (a) is not likely to suggest to the public that a connection exists between 
the organisation and the trade mark; or 
(b) is not likely to mislead the public as to the existence of a connection 
between the user and the organisation. 
 
30 When emblems, etc, are protected und er Paris Convention or TRIPS Agreement 
For the purposes of sections 28 and 29, the State emblems (other than the national flag) of, or the official signs or hallmarks adopted by, a convention country, or the 
emblems, abbreviations, or names, of an in ternational organisation, as the case may 
be, are protected under the Paris Conventi on or the TRIPS Agreement only if, or to 
the extent that,— 
(a) the country or the organisation concerned has notified New Zealand in 
accordance with Article 6ter (3) of the Paris Convention, or under that Article 
as applied by the TRIPS Agreement, that it desires to protect the State 
emblem, official sign, or hallmark, or the emblem, abbreviation, or name, as 
the case may be; and 
(b) the notification remains in force; and 
(c) New Zealand has not objected to it in accordance with Article 6ter (4) of the 
Paris Convention, or under that Article as applied by the TRIPS Agreement, or 
any such objection has been withdrawn. 
  IP/N/1/NZL/T/4 
 Page 15 
 
 
 Part 3—Process for obtaining registrat ion of trade mark and other matters 
 
[Diagram not included] 
 
Subpart 1—Preliminary 
 
31 Classification of trade marks 
(1) Goods and services must be classified for the purposes of the registration of 
trade marks according to a prescribed system of classification. 
(2) Any question arising as to the class wi thin which any goods or services fall 
must be determined by the Commissioner, whose decision is final. 
 
Subpart 2—Applications 
 
General 
32 Application: how made 
(1) A person may, on payment of the prescribed fee (if any), apply in the 
prescribed manner (if any) for the registration of a trade mark or series of trade 
marks used or proposed to be used in respect of the following: 
(a) particular goods or services within 1 or more classes: 
(b) particular goods and services within 1 or more classes. 
 
(2) The Commissioner must not register a trade mark in respect of all of the goods 
and services included in a class, or a large variety of goods or services, unless 
the specification is justified by the use or intended use of the sign. 
 
33 Joint applications 
Two or more persons may make a joint applicat ion if either or any of those persons is 
entitled to use the trade mark only on behalf of both or all of them, or in relation to 
goods or services with which both or all of them are connected in the course of trade.  
Priority of applications 
 
34 Priority of applications for registration of identical or similar trade marks 
(1) If different persons separa tely apply for the registration of trade marks that are 
identical or similar to each other and that are in respect of identical or similar 
goods or services, the first application received by the Commissioner has 
priority over all the other applications and may proceed. 
(2) If different persons separa tely apply for the registration of trade marks that are 
identical or similar to each other and that are in respect of identical or similar 
goods or services and their applications are received at the same time by the 
Commissioner,— 
(a) each application has equal priority and may proceed; and 
(b) the Commissioner must notify each applicant of each other's 
application. 
(3) For the purposes of subsection (2), 2 or more applications that are received on 
the same day are to be treated as if they had been received at the same time. 
(4) Section 36 overrides this section. IP/N/1/NZL/T/4 
Page 16  
 
  
35 Commissioner's requirements in relation to applications without priority 
 The Commissioner must— 
(a) inform each applicant whose application does not have priority over all other 
applications under section 34(1), or does not have equal priority under section 
34(2), of the applicant's order of priority; and 
(b) determine, according to its order of priority, each application. 
 
36 Priority of application to which convention country application relates 
(1) A person who has applied for the registration of a trade mark in a convention 
country (whether before or after it b ecame a convention country), or his or her 
legal representative or assignee, is entitled to registration of his or her trade mark in priority to other applicants, and the registration has the same date as 
the date of the application in the convent ion country if the application is made 
within 6 months after the date of the convention country application. 
(2) Subsection (1) applies only in respect of  the first application for the trade mark 
that is made in a convention country by a person and does not apply to any subsequent applications for the trade mark by that person. 
(3) The use of the trade mark in New Zealand during the 6-month period referred 
to in subsection (1) does not affect the priority of the application for the 
registration of the trade mark to which the convention country application 
relates. 
 
Amendment of application 
 
37 Withdrawal, etc, of application 
(1) An applicant may, at any time, withdraw an application or limit the 
specification. 
(2) An application may also be altered, at the request of the applicant, by 
correcting only— (a) the name or address of the applicant; or 
(b) an error or omission that, in the Commissioner's opinion, does not 
materially alter the meaning or scope of the application. 
 38 When Commissioner or Court may amend application 
(1) The Commissioner or the Court, as the case may be, may at any time (whether 
before or after acceptance) correct any error in connection with the 
application. 
(2) Section 37(2)(b) overrides subsection (1). 
 
Acceptance or rejection of application 
 
39 Examination of application  
The Commissioner must examine an application in order to determine whether it complies with the requirements of this Act. 
  IP/N/1/NZL/T/4 
 Page 17 
 
 
 40 Acceptance of application 
The Commissioner must, subject to any conditions the Commissioner thinks fit, 
accept an application that complies with the requirements of this Act. 
 41 Applicant must be notified of non-complying application 
If the Commissioner considers that an application does not comply with the requirements of this Act, the Commissioner must— (a) inform the applicant; and 
(b) give the applicant an opportunity to respond, or to amend the application by 
correcting only those matters set out in section 37, within the time specified by 
the Commissioner. 
 
42 Revocation of acceptance of application 
(1) The Commissioner may revoke the acceptance of an application before the 
trade mark to which the application relates is registered if the Commissioner is 
satisfied that— 
(a) the application was accepted because of an error or omission made by 
the Commissioner; or 
(b) another application that relates to the trade mark has priority under 
section 36. 
2) If the Commissioner revokes the acceptance of an application,— 
(a) the application is to be treated as if it had not been accepted; and (b) section 39 again applies to the application. 
 43 Rejection of application 
The Commissioner must reject an application if, within the time specified by the 
Commissioner, the applicant does not satisfy the Commissioner that the applicant has 
complied with the requirements in this Act for registering a trade mark. 
 44 Abandonment of application 
(1) If, within the time specified by the Commissioner, the applicant has not 
responded to a notification under section 41, the Commissioner must treat the 
application as abandoned. 
(2) The Commissioner must not treat an application as abandoned under 
subsection (1) if the application is awaiting the outcome of— (a) opposition proceedings in respect of a prior application; or 
(b) cancellation, revocation, or invalidity proceedings in respect of a prior 
registration. 
 45 Applicant must be notified of grounds, etc, of conditional acceptance or rejection 
of application 
The Commissioner must, if required to do so by an applicant, state in writing the grounds for the Commissioner's decision and the materials used in arriving at the 
decision. 
 IP/N/1/NZL/T/4 
Page 18  
 
 Advertisement of accepted application 
 
46 Advertisement of accepted application 
The Commissioner must ensure that an application that has been accepted is advertised in the prescribed manner, if any. 
 
Subpart 3—Opposition to application 
 
47 Opposition to accepted application 
(1) A person may, within the prescribed time and in the prescribed manner, give 
the Commissioner written notice of opposition to an application. 
(2) The notice of opposition must include a statement of the grounds of opposition 
and any prescribed matters. 
(3) The Commissioner must send a copy of the notice to the applicant. 
 
48 Applicant's counter-statement 
(1) An applicant to whom a notice of o pposition has been sent must, within the 
prescribed time, send to the Commissioner a counter-statement of the grounds 
on which the applicant relies for his or her application. 
(2) If an applicant does not send a counter-s tatement to the Commissioner within 
the prescribed time, the applicant is deemed to have abandoned the 
application. 
(3) If an applicant sends a counter-statement to the Commissioner, the 
Commissioner must send a copy of the counter-statement to every person who 
gave notice of opposition. 
 
49 Commissioner's determination on opposition 
 The Commissioner must— 
(a) hear the parties, if so required; and 
(b) consider the evidence; and (c) determine whether, and subject to what conditions, if any, the trade mark is to 
be registered. 
 
Subpart 4—Registration of trade mark 
 50 When trade mark must be registered  
(1) Subject to subsection (2), the Commissioner must register a trade mark if the 
Commissioner has accepted the application for its registration and— 
(a) either— 
(i) No notice of opposition is given in accordance with section 47; 
or 
(ii) all opposition proceedings are withdrawn or decided in favour 
of allowing registration of the trade mark; and 
(b) the Commissioner does not intend to revoke the acceptance of the 
application. 
(2) The Commissioner must not register a trade mark until 6 months after the date 
of application for registration. 
  IP/N/1/NZL/T/4 
 Page 19 
 
 
 51 Commissioner's requirements on registration 
 On the registration of a trade mark, the Commissioner must— 
(a) enter, on the register, the actual date of registration and the deemed date of 
registration; and 
(b) issue to the applicant a certificate of registration; and 
(c) in the case of an application for the registration of a series of trade marks, 
register the trade marks as a series in 1 registration. 
 
52 Commissioner may dispense with pro duction of probate or letters of 
administration in certain cases (1) On application in the prescribed manner and payment of any prescribed fees, 
the Commissioner may, without requiring the production of probate or letters of administration,— 
(a) if the owner of a registered trade mark has died, whether before or after 
the commencement of this Act, register a qualified person as the owner 
of the trade mark: 
(b) if an applicant has died before the registration of the trade mark, 
whether before or after the commencement of this Act, allow a 
qualified person to complete the ap plication and may register that 
person as the owner of the trade mark. 
(2) Every qualified person who is registered under this section as the owner of a 
trade mark must hold it subject to all existing interests and equities affecting it. 
(3) Nothing in section 70 or section 73 of the Administration Act 1969 limits this 
section. 
 
53 Replacement certificate of registration 
 The Commissioner may issue a further certificate of registration if— 
(a) an application for a further certificat e of registration has been made in the 
prescribed manner; and 
(b) the prescribed fee, if any, has been paid; and (c) the Commissioner is satisfied that a cert ificate of registration has been lost or 
destroyed or in any other case in which he or she thinks it expedient. 
 
Subpart 5—Additional matters that relate to certification trade marks 
 54 When regulations that govern use of ce rtification trade mark must be provided 
Before the Commissioner makes a decision on an application for the registration of a 
certification trade mark, the applicant mu st provide the Commissioner with draft 
regulations that govern the use of the certification trade mark for the Commissioner's 
approval. 
 
55 Consideration of application for regi stration of certification trade mark 
(1) When the Commissioner or the Court deals with an application for the 
registration of a certification trade mark, the Commissioner or the Court, as 
the case may be, must consider— (a) the matters that are relevant to an application under section 32; and 
(b) whether or not the certification trade mark should indicate that it is 
such a trade mark; and IP/N/1/NZL/T/4 
Page 20  
 
 (c) whether the applicant is competent to certify the goods or services in 
respect of which the certification trade mark is to be registered; and 
(d) whether the draft regulations are satisfactory in terms of subsection (2); 
and 
(e) whether in all the circumstances th e registration applied for would be 
in the public interest. 
(2) For the purposes of subsection (1)(d), regulations— 
(a) must contain provisions that relate to when the owner is— 
(i) to certify goods or services; and 
(ii) to authorise the use of the trade mark; and 
            (b) must contain, or may contain, any other provisions that the 
Commissioner requires or permits (as the case may be) to be inserted in them (for example, a right of appeal to the Commissioner against the 
owner's refusal to certify goods or se rvices or to authorise the use of 
the trade mark in accordance with the regulations). 
 56 Approved regulations must be deposited at Patent Office 
After the Commissioner has approved the draft regulations, the approved regulations 
that govern the use of the registered certification trade mark must be deposited at the 
Patent Office for inspection. 
 
Subpart 6—When registration of trade mark ceases 
 
Duration of registration 
 
57 Duration of registration  
(1) The duration of the registration of a trad e mark under this Act is effective for a 
period of 10 years commencing on the deemed date of registration unless the 
trade mark ceases to be registered before the expiration of that period. 
(2) This section does not apply to a tr ade mark first registered under the Trade 
Marks Act 1953. 
 
Renewal of registration 
 
58 Renewal of registration 
The registration of a trade mark may be renewed in accordance with section 59 for 
further periods of 10 years. 
 
59 Notice of pending expiration of registration of trade mark 
(1) The Commissioner must, on an application made by the owner of a registered 
trade mark in the prescribed manner and within the prescribed time, renew the 
registration of the trade mark from the date that the registration expires. 
(2) Before the registration of a trade mark expires and if an owner has not made 
an application under subsection (1), the Commissioner must, in the prescribed 
manner, send to the owner a notice of the— (a) date on which the registration of the trade mark will expire; and 
(b) conditions as to the payment of fees or otherwise on which a renewal 
of registration may be obtained; and  IP/N/1/NZL/T/4 
 Page 21 
 
 
 (c) removal of the registration, subj ect to any conditions specified by the 
Commissioner as to the trade mark's restoration to the register if, at the expiration of the period of 10 years, the conditions referred to in 
paragraph (b) have not been complied with. 
(3) The Commissioner must remove the trade mark from the register, subject to 
any conditions specified by the Commissioner as to the trade mark's 
restoration to the register, if, at the expiration of the period of 10 years,— (a) notification of the date of expiry has been sent under subsection (2)(a); 
and 
(b) the conditions referred to in subsection (2)(b) have not been complied 
with. 
 
60 Status of trade mark removed from register for non-payment of renewal fee 
(1) A trade mark that has been removed from the register for non-payment of the 
renewal fee must be taken into account for a period of 1 year after the date of 
expiry of the registered trade mark when determining the registrability of a 
later application.  
(2) Subsection (1) does not apply if the Commissioner is satisfied either that— 
(a) there has been no genuine use of the trade mark that has been removed 
during the 2 years immediately before its removal; or 
(b) No deception or confusion would be  likely to arise from the use of the 
trade mark that is the subject of the a pplication by reason of any previous use 
of the trade mark that has been removed. 
 
Voluntary cancellation of registration of trade mark 
 
61 Voluntary cancellation of registration of trade mark 
The registration of a trade mark may be cancelled by the owner in relation to all or any of the goods or services in respect of which it is registered. 
 
Mandatory cancellation or alteration of registration of trade mark 
 
62 Cancellation or alteration of registrati on of trade mark for breach of condition 
The Commissioner or the Court, as the case may be, may , on the application of an 
aggrieved person or on the Commissioner's own motion, make an order that cancels 
or alters the registration of a trade mark on the ground of failure to comply with a 
condition entered on the register in relation to the trade mark. 
 
63 Cancellation or alteration of regi stration of certification trade mark 
The Commissioner may, on the application of an aggrieved person or on the 
Commissioner's own motion, require that any entry in the register that relates to a 
certification trade mark be cancelled or altered, or that the deposited regulations be 
altered, on any of the following grounds: 
(a) that the owner is no longer competent to certify any goods or services in 
respect of which the certification trade mark is registered: 
(b) that the owner has not complied with the deposited regulations: IP/N/1/NZL/T/4 
Page 22  
 
 (c) that it is not in the public interest for the trade mark to be registered: 
(d) that it is in the public interest to alter the regulations. 
 
64 Cancellation or alteration of registration of collective trade mark 
The Commissioner may, on the application of an aggrieved person or on the 
Commissioner's own motion, require an entry in the register that relates to a collective 
trade mark to be cancelled or altered on any of the following grounds: (a) that the collective association concerned is an unlawful association under any 
enactment; or 
(b) that the collective association concerned no longer exists; or 
(c) that it is not in the public interest for the trade mark to be registered. 
 
Revocation of registration of trade mark 
 
65 Application for revocation of registration of trade mark 
(1) An aggrieved person may apply to the Commissioner or the Court for the 
revocation of the registration of a trade mark. 
(2) The Commissioner or the Court may refuse any application for the revocation 
of the registration of a trade mark that is vexatious. 
 
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, up to the date 1 month before the date of the application for the 
revocation of the registration of the trade mark, a continuous period of 3 years or more elapsed following the actual date of registration during 
which the trade mark was not put to genuine use in the course of trade 
in New Zealand, by any owner for the time being, in relation to the 
goods or services in respect of which it is registered: 
(b) except as provided in subsection (3), that the use of the trade mark has 
been suspended for an uninterrupted period of 3 years: 
(c) that, in consequence of acts or in activity 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.  IP/N/1/NZL/T/4 
 Page 23 
 
 
 (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 grounds in 
subsection (1)(a) or (b) 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. 
 
67 Onus of proof for revocation of registration of trade mark for non-use 
If an owner or a licensee intends to oppose an application for the revocation of the 
registration of a trade mark under section 66(1)(a) or (b), the owner or the licensee 
must, within the period specified by the Commissioner or the Court,— 
(a) provide proof of the use of the trade mark if the grounds in section 66(1)(a) or 
(b) form the basis for the application; and 
(b) raise the special circumstances that justify the non-use of the trade mark if 
section 66(2) applies. 
 68 Revocation of registration of trade mark 
(1) If grounds for revocation exist in respect of only some of the goods or services 
in respect of which the trade mark is registered, revocation relates only to 
those goods or services. 
(2) If the registration of a trade mark is revoked to any extent, the rights of the 
owner, to that extent, cease on— 
(a) the date of the application for revocation of the registration of the trade 
mark; or 
(b) if the Commissioner or the Court is satisfied that the grounds for 
revocation of the registration of the trade mark existed at an earlier 
date, that date. 
 
Disclaimer of use of trade mark 
 
69 Voluntary disclaimer of trade mark by owner 
The owner of a trade mark may disclaim any right to the exclusive use of any part of 
the trade mark. 
 70 Disclaimer of trade mark as condition of not revoking its registration 
If the grounds specified in section 66(1)(c) or (d) exist, the Commissioner or the 
Court may, as a condition of the registration of a trade mark not being revoked, 
require the owner of the trade mark to disclaim any right to the exclusive use of a 
word or words in relation to any goods or services. 
 
71 Disclaimer of trade mark for public interest reasons 
If, in determining whether a trade mark is to be registered or is to remain on the register, the Commissioner or the Court cons iders that there are public interest reasons IP/N/1/NZL/T/4 
Page 24  
 
 for doing so, the Commissioner or the Court may require, as a condition of its being 
on the register, that the owner— (a) disclaims any right to the exclusive use of any part of the trade mark; or 
(b) makes any other disclaimer that the Commissioner or the Court considers 
necessary for the purpose of defining the owner's rights under the registration. 
 72 Rights affected by disclaimer 
A disclaimer on the register affects only t hose rights of the owner of a trade mark that 
arise out of the registration of the trade mark in respect of which the disclaimer is 
made. 
 
Invalidity of registration of trade marks 
 
73 Invalidity of registration of trade mark 
(1) The Commissioner or the Court may,  on the application of an aggrieved 
person (which includes a person who is culturally aggrieved), declare that the 
registration of a trade mark is invalid to the extent that the trade mark was not registrable under Part 2 at the de emed date of its registration. 
(2) Despite subsection (1), the registration of a trade mark that has acquired a 
distinctive character after its registrati on must not be declared invalid even 
though the trade mark was not registrable under section 18(1)(b), (c), or (d) at 
the deemed date of its registration. 
(3) The Commissioner or the Court, as the case may be, may refuse any 
application for a declaration of invalidity that is vexatious. 
 
74 Effect of declaration of invalidity 
(1) If the registration of a trade mark is declared invalid to any extent,— 
(a) the trade mark is, to that extent, to be treated as if it had not been 
registered; and 
(b) the Commissioner may alter the register accordingly. 
(2) The validity of any transaction that occurred in respect of a registered trade 
mark before the registration of the tr ade mark was declared invalid is not 
affected. 
 75 Presumption of validity of registration of trade mark 
The registration of a trade mark is, after the expiration of 7 years from the deemed 
date of registration, deemed to be valid unless— 
(a) the registration was obtained by fraud; or 
(b) the trade mark should not have been registered on any of the grounds set out in 
section 17(1); or 
(c) the registration may be revoked on any of the grounds set out in section 66. 
 
Rectification of register 
 
76 Rectification or correction of register 
(1) A person who has an interest may apply for the rectification of an error or 
omission in the register.  IP/N/1/NZL/T/4 
 Page 25 
 
 
 (2) An application for rectification of the register may be made either to the 
Commissioner or to the Court. 
(3) An application for rectification of the register may not be made in respect of a 
matter that affects the validity of the registration of a trade mark. 
(4) The effect of the rectification of th e register is that the error or omission 
concerned is to be treated as if it had never existed unless the Commissioner or 
the Court directs otherwise. 
 
Alteration in relation to registered trade mark 
 
77 Alteration of registered trade mark not permitted 
The owner of a registered trade mark may not alter the registered trade mark after its 
actual date of registration. 
 78 Alteration of register 
After the actual date of registration of a trade mark, the Commissioner may,— (a) at the request of the owner or licens ee of the trade mark, as the case may be, 
allow the owner's or licensee's name or address to be altered on the register: 
(b) at the request of the owner, strike out any goods or services, or classes of 
goods or services, from those in respect of  which the trade mark is registered: 
(c) at the request of the owner, enter a memorandum that relates to the trade mark 
that does not in any way extend the rights given by the existing registration of the trade mark. 
 
Alteration of certification trade mark regulations  
 
79 Alteration of certification trade mark regulations 
(1) The Commissioner may, on the application of the owner of a registered 
certification trade mark, alter the re gulations that govern the use of the 
certification trade mark. 
(2) The owner of a registered certification trade mark who has applied under 
subsection (1) must provide the Commissioner with a draft of the altered 
regulations for the Commissioner's approval. 
 80 Advertisement of application for alteration of regulations 
(1) The Commissioner must ensure that an application for an alteration of the 
regulations that relate to a registered certification trade mark is advertised in 
the prescribed manner, if any. 
(2) The Commissioner must not, without giving the parties an opportunity to be 
heard, decide the application if, within the specified time, any person notifies 
the Commissioner that the person opposes the alteration of the regulations. 
 IP/N/1/NZL/T/4 
Page 26  
 
 Assignment or transmission 
 
81 Commissioner's certificate that relates to  certain assignments or transmissions 
 The Commissioner may, if requested by— 
(a) an applicant, issue a certificate that states whether or not the proposed 
assignment or transmission of the applican t's application is likely to deceive or 
confuse; or 
(b) the owner of a registered trade mark, issue a certificate that states whether or 
not the proposed assignment or transmission of the trade mark is likely to 
deceive or confuse. 
 82 Registration of title to trade mark 
(1) A trade mark is assignable and transmittable in respect of all or some of the 
goods or services for which it is registered. 
(2) A person to whom title to the trade mark is assigned or transmitted must apply 
to the Commissioner— 
(a) for registration of the person's titl e if assignment or transmission is 
after the actual date of registration; or 
(b) to change the name of the applicant on the application if assignment or 
transmission is before the ac tual date of registration. 
(3) In the case of assignments or transmissions after the actual date of registration, 
the Commissioner, on proof of the person's title,— (a) must register the person as the owner of the trade mark in relation to 
the goods or services in respect of which the assignment or 
transmission has effect; and 
(b) may issue a replacement certificate of registration in the name of the 
new owner; and 
(c) must cause any assignment, transmission, or other document produced 
in evidence of title, or a copy of those documents, to be filed for public 
record. 
(4) In the case of applications, the Co mmissioner must, on proof of the person's 
title, change the name of the applicant on the application and cause any 
assignment, transmission, or other document produced in evidence of title, or a 
copy of those documents, to be filed for public record. 
 
Licensees 
 
83 Application for registration of licensee  
(1) A person who is not the owner of a trade mark may, with or without 
conditions, be registered as a licensee of  the trade mark in relation to any of 
the goods or services in respect of which the trade mark is registered. 
(2) If a person proposes to be registered as a licensee of a trade mark,— 
(a) the owner and the proposed licensee must apply to the Commissioner 
in the prescribed manner; and  IP/N/1/NZL/T/4 
 Page 27 
 
 
 (b) the owner, or some person authorised to act on the owner's behalf and 
approved by the Commissioner, must make a statutory declaration that the person proposing to be registered as a licensee of a trade mark is 
entitled to be registered as a licensee; and 
(c) the owner must give the Commissioner the statutory declaration. 
(3) The Commissioner must file the st atutory declaration for public record. 
 
84 Registration of licensee 
If the owner and the proposed licensee of a trade mark have complied with section 
83(2), the Commissioner must register the proposed licensee as licensee of the trade 
mark in respect of any goods or servic es to which the application under that 
subsection relates. 
 
85 Assigning or transmitting right to use trade mark 
Nothing in this Act prevents a licensee fro m assigning or transmitting the right to use 
a trade mark. 
 
86 Alteration of registration of licensee 
The registration of a person as a licensee may be altered by the Commissioner as regards the goods or services in respect of which, or any conditions subject to which, 
it has effect, on the application in the pres cribed manner of the owner of the trade 
mark to which the registration relates. 
 
87 Cancellation of registration of licensee 
(1) The registration of a person as a licensee of a trade mark must be cancelled by 
the Commissioner if the trade mark is no longer registered. 
(2) The registration of a person as a licensee of a trade mark may be cancelled by 
the Commissioner— 
(a) if the Commissioner receives no advice within the time specified by 
the Commissioner that the relationship between the owner and the licensee of the trade mark described in section 83(1) is current; or 
(b) on the written application in the prescribed manner of the owner or the 
licensee of the trade mark; or 
(c) on the written application of any person on any of the following 
grounds: (i) that the licensee has used the trade mark in a way that— 
(A) is not the permitted use; or 
(B) deceives or confuses; or 
(C) is likely to deceive or confuse: 
(ii) that the owner or the licensee misrepresented, or failed to 
disclose, some fact material to the application for the 
registration, or that the circumstances have materially changed 
since the date of the registration: 
(iii) that the registration should not have been effected having 
regard to rights vested in the applicant by virtue of a contract in the performance of which the applicant is interested. 
 IP/N/1/NZL/T/4 
Page 28  
 
 Part 4—Legal proceedings 
 
Subpart 1—Civil proceedings for infringement 
 
How Act affects other rights 
 
88 How Act affects other rights 
 Nothing in this Act affects— 
(a) the law relating to passing off; or 
(b) rights under the Fair Trading Act 1986; or 
(c) rights under the Geographical Indications Act 1994. 
 
Acts amounting to infringement 
 
89 Infringement where identical or sim ilar sign used in course of trade 
(1) A person infringes a registered trade mark if the person does not have the right 
to use the registered trade mark and uses in the course of trade a sign— (a) identical with the registered trade mark in relation to any goods or 
services in respect of which the trade mark is registered; or 
(b) identical with the registered trade mark in relation to any goods or 
services that are similar to any goods or services in respect of which 
the trade mark is registered, if that use would be likely to deceive or confuse; or 
(c) similar to the registered trade mark in relation to any goods or services 
that are identical with or similar to any goods or services in respect of which the trade mark is registered if that use would be likely to deceive 
or confuse; or 
(d) identical with or similar to the registered trade mark in relation to any 
goods or services that are not similar to the goods or services in respect 
of which the trade mark is registered where the trade mark is well known in New Zealand and the use of the sign takes unfair advantage 
of, or is detrimental to, the distin ctive character or the repute of the 
mark. 
(2) Subsection (1) applies only if the sign is used in such a manner as to render the 
use of the sign as likely to be taken as being use as a trade mark. 
(3) Sections 92 to 98 override this section. 
 90 Infringement where non-compliance with certain contractual requirements 
(1) A registered trade mark is infringed if— 
(a) a purchaser or owner of goods and the owner or licensee of the 
registered trade mark have entered into a written contract that requires 
the purchaser or owner of the goods not to do, in relation to the goods, 
any of the acts listed in subsection (2); and 
(b) the owner, for the time being, of the goods— 
(i) has notice of the contractual requirement; and (ii) does or authorises, in the cour se of trade, or with a view to 
dealing with the goods in the course  of trade, any of those listed 
acts; and  IP/N/1/NZL/T/4 
 Page 29 
 
 
 (iii) did not purchase the goods for value and in good faith before 
receiving notice of the contractual requirement; and 
(iv) is not a successor in title to an owner to whom subparagraph 
(iii) applies. 
(2) The acts referred to in subsection (1) are— 
(a) the application of the trade mark on the goods after their condition, 
get-up, or packaging has been altered in any manner specified in the contract: 
(b) if the trade mark is on the goods,— 
(i) the alteration, part removal, or part obliteration of the trade 
mark: 
(ii) the application of any other trade mark to the goods: (iii) the addition to the goods of any written material that is likely to 
damage the reputation of the trade mark: 
(c) if the trade mark is on the goods, and there is something else on the 
goods that indicates a connection in the course of trade between the 
owner or licensee and the goods, the removal or obliteration, whether wholly or partly, of the trade mark. 
 91 No defence that infringement arose from use of company name 
In an action for infringement of a trade mark , it is not a defence that the infringement 
arose from the use of the name under which a company has been registered. 
 
Acts not amounting to infringement 
 92 No infringement where trade mark us ed in circumstances not covered by 
registration 
A registered trade mark is not infringed by the use of a trade mark in any way or in 
any circumstances to which, having regard to any conditions entered on the register in 
relation to the trade mark, the registration does not extend. 
 
93 No infringement where more than 1 id entical or similar registered trade marks 
used A registered trade mark is not infringed by the use of another registered trade mark in relation to any goods or services for which that other trade mark is registered. 
 
94 No infringement for comparative advertising of registered trade mark 
A registered trade mark is not infringed by the use of the registered trade mark for the 
purposes of comparative advertising, but any such use otherwise than in accordance 
with honest practices in industrial or comm ercial matters must be treated as infringing 
the registered trade mark if the use, withou t due cause, takes unfair advantage of, or is 
detrimental to, the distinctive character or the repute of the trade mark. 
 
95 No infringement for honest practices 
A person does not infringe a registered trade mark if, in accordance with honest 
practices in industria l or commercial matters, the person uses— 
(a) the person's name or the name of the person's place of business; or IP/N/1/NZL/T/4 
Page 30  
 
 (b) the name of the person's predecessor in business or the name of the person's 
predecessor's place of business; or 
(c) a sign to indicate— 
(i) the kind, quality, quantity, intended purpose, value, geographical 
origin, or other characteristic of goods or services; or 
(ii) the time of production of goods or of the rendering of services. 
 
96 No infringement for certain contin uous 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 has been continuously used by the owner or the owner's 
predecessor in title and used in relation to those goods or services in 
the course of trade before, whichever is the earlier of,— (i) the date of application in New Zealand for the registration of 
trade mark A; or 
(ii) the date that the owner first used trade mark A. 
(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 relati on 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. 
 97 No infringement where certain connection in course of trade 
 A trade mark registered— 
(a) in respect of goods is not infringed by its use in relation to identical or similar 
goods connected in the course of trade with the owner or licensee if, as to 
those goods or a bulk of which they form part,— 
(i) the owner or licensee has applied the trade mark and has not later 
removed or obliterated it; or 
(ii) the owner or licensee has consente d to the use of the trade mark; or 
(b) in respect of goods is not infringed by its use in relation to identical or similar 
goods adapted to form part of, or to be an accessory to, or intended to be 
provided with or in connection with, ot her goods or services in relation to 
which the trade mark has been or can be used without infringement if— 
(i) the use of the trade mark is reasonably necessary in order to indicate 
that the goods are so adapted or intended; and  IP/N/1/NZL/T/4 
 Page 31 
 
 
 (ii) the purpose or the effect of the us e of the trade mark is to indicate only 
a connection in the course of trade between the owner and licensee and the goods; or 
(c) in respect of services is not infringed by its use in relation to identical or 
similar services intended to be provided with or in connection with goods or 
other services in relation to which the trade mark has been or can be used 
without infringement if— (i) the use of the trade mark is reasonably necessary in order to indicate 
that the services are intended to be so provided; and 
(ii) the purpose or the effect of the us e of the trade mark is to indicate only 
a connection in the course of trade between the owner and licensee and 
the services. 
 
98 When owner or licensee consents to use of registered trade mark 
(1) For the purposes of sect ion 97(a), the owner or licensee is deemed to have 
consented to the use of a trade mark if a person with whom the owner or 
licensee has an arrangement that relates to the use of the trade mark by the owner or licensee has consented to its use (whether or not that consent is 
subject to any conditions). 
(2) Subsection (1) applies only to the use of a trade mark in relation to a medicine 
that is imported by the Crown under section 32A of the Medicines Act 1981. 
 
When infringement proceedings may be brought 
 
99 No proceedings for infringeme nt of unregistered trade mark 
No person may bring proceedings to prevent, or to recover damages for, the 
infringement of an unregistered trade mark. 
 
100 Time for bringing proceedings for infringement of registered trade mark 
The owner of a registered trade mark may bring proceedings for infringement of the 
registered trade mark if,— 
(a) in the case of a registered trade mark the application for registration of which 
has priority under section 36, the infringement occurred on or after the date of 
application in New Zealand for re gistration of the trade mark; or 
(b) in the case of every other registered trade mark, the infringement occurred on 
or after the deemed date of registration of the 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 
The owner of a registered trade mark, or, in the case of a collective trade mark, 1 or 
more members of a collective association acting on its behalf, may apply to the Court 
for relief if the trade mark is infringed. 
 102 Licensee may request owner of regist ered trade mark to bring proceedings 
Subject to agreement between the parties, a licensee of a registered trade mark may 
request the owner of the registered trade mark to take proceedings to prevent 
infringement of the registered trade mark. IP/N/1/NZL/T/4 
Page 32  
 
  
103 Consequences of owner of registered  trade mark not bringing proceedings 
If the owner of a registered trade mark refuses or neglects to bring proceedings within 
2 months after the licensee requested the owner to bring the proceedings, the licensee 
may commence proceedings for infringement in the licensee's own name as if the 
licensee were the owner. 
 
104 Consequences of licens ee commencing proceedings 
 If the licensee commences proceedings under section 103,— 
(a) the owner becomes a defendant in the proceedings; but 
(b) the owner is not liable for any costs unless the owner defends the proceedings. 
 
Unjustified proceedings 
 
105 Unjustified proceedings 
(1) If a person brings proceedings alleging an infringement of a registered trade 
mark, the Court may, on the application of any person against whom the proceedings are brought,— 
(a) make a declaration that the bringing of proceedings is unjustified: 
(b) make an order for the payment of damages for any loss suffered by the 
person against whom the proceedings are brought. 
(2) The Court must not grant relief under th is section if the person who brings the 
proceedings proves that the acts in respect of which proceedings are brought 
constituted, or would have constituted if they had been done, an infringement 
of the trade mark concerned. 
(3) Nothing in this section makes a barris ter or solicitor of the High Court of New 
Zealand liable to any proceedings under this section in respect of any act done 
in his or her professional capa city on behalf of a client. 
 
Types of relief available for infringement 
 
106 Types of relief available for infr ingement of registered trade mark 
If an application is made to the Court for relief, the relief that the Court may grant 
includes— 
(a) an injunction on any terms that the Court thinks fit: (b) either damages or an account of profits. 
 107 Damages for infringement of collective trade mark 
In claiming damages for infringement of a collective trade mark, the collective association that owns the collective trad e mark (or the member or members taking 
action on behalf of that collective association) may take into account any damage or 
loss of profits sustained or incurred by any members as a result of the infringement. 
 
108 Order for erasure, etc, of offending sign 
(1) If a person has infringed the exclusive right to use a registered trade mark, the 
Court may make an order that requires the person—  IP/N/1/NZL/T/4 
 Page 33 
 
 
 (a) to erase, remove, or obliterate the offending sign from any infringing 
goods, infringing material, or infringing object in the person's possession, custody, or control; or 
(b) if it is not reasonably practicable to erase, remove, or obliterate the 
offending sign, to destroy the infringing goods, infringing material, or 
infringing object. 
(2) If an order under subsection (1) is not complied with, or it appears to the Court 
likely that the order would not be complied with, the Court may order that the 
infringing goods, infringing material, or infringing object be delivered to any 
person whom the Court may direct— 
(a) to erase, remove, or obliterate the offending sign from the infringing 
goods, infringing material, or infringing object; or 
(b) if it is not reasonably practicable to erase, remove, or obliterate, the 
offending sign, to destroy the infringing goods, infringing material, or 
infringing object. 
 
Orders for delivery up in civil proceedings 
 
109 Order for delivery up of infringing goods, infringing material, or infringing 
object (1) The Court may order any infringing goods, infringing material, or infringing 
object in the possession of any person or before the Court to be delivered up to 
the owner of the registered trade mark or any other person that the Court 
thinks fit. 
(2) No order may be made under this section unless— 
(a) the Court makes an order under section 110; or 
(b) it appears to the Court that there are grounds for making an order under 
that section. 
(3) A person to whom any infringing goods, infringing material, or infringing 
object is delivered up under an order ma de under this section must, if an order 
under section 110 is not made, retain them pending— 
(a) the making of an order under that section; or 
(b) the decision not to make an order under that section. 
(4) Nothing in this section affects any other power of the Court. 
 
110 Order for disposal of infringing goods, infringing material, or infringing object 
An application may be made to the Court for an order that the infringing goods, infringing material, or infringing object delivered up under an order made under 
section 109 must be— 
(a) forfeited to the owner of the registered  trade mark or any other person that the 
Court thinks fit; or 
(b) destroyed or otherwise dealt with as the Court thinks fit. 
 IP/N/1/NZL/T/4 
Page 34  
 
 111 Matters to be considered by Court 
In considering what order, if any, should be made under section 110, the Court must 
consider— 
(a) whether other remedies available for in fringement of the exclusive right to use 
the registered trade mark would be adequate to compensate, or protect the 
interests of,— 
(i) the owner of the registered trade mark: (ii) the licensee (if any) of the registered trade mark; and 
(b) the need to ensure that no infringing goods, infringing material, or infringing 
object is disposed of in a manner that would adversely affect— 
(i) the owner of the registered trade mark: 
(ii) the licensee (if any) of the registered trade mark. 
 
112 Directions for service 
The Court must issue directions for the serv ice of notice on every person who has an 
interest in the infringing goods, infringing material, or infringing object to which an 
application under section 110 relates. 
 
113 Rights of persons with in terest in infringing goods, infringing material, or 
infringing object 
Every person who has an interest in the infringing goods, infringing material, or infringing object to which an application under section 110 relates is entitled to— (a) appear in proceedings for an order under that section, whether or not the 
person is served with notice; and 
(b) appeal against any order made, whether or not the person appears in the 
proceedings. 
 114 When order under section 110 takes effect 
 An order made under section 110 takes effect either— 
(a) at the end of the period within which notice of an appeal may be given; or (b) on the final determination or abandonment of the proceedings on appeal. 
 115 Miscellaneous court order if more than 1 person interested in infringing goods, 
infringing material, or infringing object 
If more than 1 person is interested in the infringing goods, infringing material, or 
infringing object to which an application under section 110 relates, the Court may— 
(a) direct that the infringing goods, infringing material, or infringing object be 
sold, or otherwise dealt with, and the proceeds divided; and 
(b) make any other order that it thinks fit. 
 116 Position where no order made under section 110 
If the Court decides that no order should be made under section 110, the person in whose possession, custody, or control the infringing goods, infringing material, or 
infringing objects were before  being delivered up is entitled to their return. 
   IP/N/1/NZL/T/4 
 Page 35 
 
 
 Preliminary 
 
117 When criminal proceedings may be commenced 
(1) No proceeding may be commenced for any offence against any of sections 120 
to 124 that was committed before the actual date of registration of the trade 
mark concerned. 
(2) Despite section 14 of the Summary Proceedings Act 1957, an information for 
an offence against any of sections 120 to 124 may be laid at any time within 3 
years after the time when the matt er of the information arose. 
 
118 Application of Criminal Justice Act 1985 
If a person is convicted of an offence against any of sections 120 to 124 in 
circumstances where that offence involves the making of profit or gain,— 
(a) that offence is deemed to have caused a loss of property for the purposes of 
section 22(1)(b) of the Criminal Justice Act 1985; and 
(b) the provisions of that Act that rela te to the imposition of the sentence of 
reparation apply accordingly. 
 
119 Liability of officers of body corporate 
If a body corporate is convicted of an o ffence against any of sections 120 to 124, 
every director and every person concerned in the management of the body corporate 
is guilty of the offence if it is proved— (a) that the act that constituted the offence took place with his or her authority, 
permission, or consent; and 
(b) that he or she— 
(i) knew, or could reasonably be expected to have known, that the offence 
was to be or was being committed; and 
(ii) failed to take all reasonable steps to prevent or stop it. 
 
Offences and penalties 
 
120 Offence to counterfeit registered trade mark 
(1) Every person commits an offence who, with the intention of obtaining a gain 
for himself or herself or any other pe rson or of causing loss to any person, 
counterfeits a registered trade mark. 
(2) For the purposes of subsection (1), a person counterfeits a registered trade 
mark if, without the consent of the owner of the registered trade mark, the 
person knowingly— 
(a) makes a sign that is identical to, or similar to, the registered trade mark 
so as to be likely to deceive; or 
(b) falsifies a genuine registered trade mark, whether by alteration, 
addition, effacement, partial removal, or otherwise. 
 121 Offence to falsely apply registered trade mark to goods or services 
(1) Every person commits an offence who falsely applies a registered trade mark 
to goods or services. 
(2) For the purposes of this section and section 124, a person falsely applies a 
registered trade mark to goods or services if,— IP/N/1/NZL/T/4 
Page 36  
 
 (a) without the consent of the owner of the registered trade mark, the 
person knowingly applies the trade mark or a sign that the person knows is likely to be mistaken for that trade mark to the goods or 
services; and 
(b) in the case of an application to goods, the person knows the goods are 
not the genuine goods of the owner or  licensee of the registered trade 
mark. 
(3) For the purposes of this section and se ction 124, a trade mark is applied to 
goods or services if— 
(a) the trade mark is used in a sign or an advertisement including a 
televised advertisement or an invoice, wine list, catalogue, business 
letter, business paper, price list, or other commercial document; and 
(b) the goods are delivered, or services provided, as the case may be, to a 
person in accordance with a request or order made by reference to the 
trade mark as so used. 
(4) For the purposes of this section and section 124, a sign is applied to goods or 
services if the sign— (a) is applied to the goods themselves; or 
(b) is applied to a covering, label, reel, or thing in or with which the goods 
are sold or exposed or had in possession for a purpose of trade or 
manufacture; or 
(c) is used in a manner likely to lead a person to believe that it refers to, 
describes, or designates the goods or services. 
(5) For the purposes of subsection (4)(b),— 
covering  includes a stopper, glass, bottle, vessel, box, capsule, case, frame, or 
wrapper 
 
label  includes a band or ticket. 
 122 Offence to make object for making copies of registered trade mark, etc 
Every person commits an offence who makes an object specifically designed or 
adapted for making copies of a registered trade mark or a sign that is likely to be 
mistaken for a trade mark with intent that the object be used for, or in the course of, 
committing an offence against section 120 or section 121. 
 
123 Offence to possess object for making copies of registered trade mark, etc 
Every person commits an offence who, without lawful authority or excuse,— (a) has in the person's possession, custody, or control, an object specifically 
designed or adapted for making copies of  a registered trade mark or a sign that 
is likely to be mistaken for that trade mark; and 
(b) intends the object to be used for, or in the course of, committing an offence 
against section 120 or section 121. 
 
124 Offence to import or sell, etc, goods with falsely applied registered trade mark 
 Every person commits an offence who— 
(a) imports into New Zealand for the pur pose of trade or manufacture any goods 
to which that person knows a registered trade mark is falsely applied; or  IP/N/1/NZL/T/4 
 Page 37 
 
 
 (b) sells or exposes for sale any goods to which that person knows a registered 
trade mark is falsely applied; or 
(c) has in the person's possession for th e purpose of trade or manufacture any 
goods to which that person knows a registered trade mark is falsely applied. 
 125 Penalties for offences 
 Every person who is convict ed of an offence against— 
(a) section 120 or section 121 or section 122 or section 123 is liable on conviction 
to— 
(i) a fine not exceeding $10,000 for each of the goods or services to which 
the offence relates, but not exceeding $150,000 in respect of the same 
transaction; or 
(ii) imprisonment for a term not exceeding 5 years; or 
(b) section 124 is liable on conviction to— 
(i) a fine not exceeding $150,000; or 
(ii) imprisonment for a term not exceeding 5 years. 
 
Orders for delivery up in criminal proceedings 
 
126 Order for delivery up in criminal proceedings 
The Court before which proceedings are brought against a person for an offence 
against any of sections 122 to 124 may order that goods or an object be delivered up to the owner of the registered trade mark or to any other person that the Court may 
direct if it is satisfied that, at the time of the defendant's arrest or charge,— 
(a) the defendant had in the defendant's possession, custody, or control in the 
course of trade, goods to which— 
(i) the registered trade mark that has been counterfeited has been applied; 
or 
(ii) a trade mark or sign that is similar to the registered trade mark so as to 
be likely to deceive or confus e has been falsely applied; or 
(b) the defendant had in the defendant's possession, custody, or control an object 
specifically designed or adapted for counterfeiting a particular trade mark, 
knowing that the object had been or was to be used to counterfeit trade marks 
for use in the course of trade. 
 
127 When order for delivery up may be made 
(1) An order may— 
(a) be made under section 126 by the Court of its own motion or on the 
application of the prosecution; and 
(b) be made whether or not the person is convicted of the offence; but 
(c) not be made if it appears to the Court unlikely that an order will be 
made under section 128. 
(2) A person to whom goods or an object is delivered up under an order made 
under section 126 must retain the goods or object pending the making of an 
order or the decision not to make an order under section 128. 
 IP/N/1/NZL/T/4 
Page 38  
 
 128 Order for disposal of goods or other object ordered to be delivered up 
An application may be made to the Cour t for an order that the goods or object 
delivered up under an order made under section 126 must be— 
(a) forfeited to the owner of the registered trade mark; or 
(b) destroyed or otherwise dealt with as the Court thinks fit. 
 129 Matters to be considered by Court 
In considering what order, if any, should be made under section 128, the Court must 
consider— 
(a) whether other remedies available in proceedings for counterfeiting or falsely 
using a registered trade mark would be adequate to compensate, or protect the 
interests of, the owner of the registered trade mark; and 
(b) the need to ensure that no infringing  goods are disposed of in a manner that 
would adversely affect the owner of the registered trade mark. 
 
130 Directions for service 
The Court must issue directions for the serv ice of notice on every person who has an 
interest in the goods or other object to whic h an application under section 128 relates. 
 131 Rights of persons with int erest in goods or other object 
Every person who has an interest in the goods  or other object to which an application 
under section 128 relates is entitled to— (a) appear in proceedings for an order under that section, whether or not that 
person is served with notice; and 
(b) appeal against any order made, whether or not that person appears in the 
proceedings. 
 132 When order under section 128 takes effect 
 An order made under section 128 takes effect either— 
(a) at the end of the period within which notice of an appeal may be given; or (b) on the final determination or abandonment of the proceedings on appeal (if 
notice of the appeal is given before the end of that period). 
 
133 Miscellaneous court orders if more than  1 person interested in goods or other 
object 
If more than 1 person is interested in the goods or other object to which an application 
under section 128 relates, the Court may— 
(a) direct that the goods or object be sold, or otherwise dealt with, and the 
proceeds divided; and 
(b) make any other order as it thinks fit. 
 
134 Position where no order made under section 128 
If the Court decides that no order should be made under section 128, the person in 
whose possession, custody, or control the goods or other object was before being 
delivered up is entitled to its return. 
  IP/N/1/NZL/T/4 
 Page 39 
 
 
 Subpart 3—Border protection measures 
 
Interpretation  
135 Interpretation 
In this subpart and section 204, unless the context otherwise requires,— 
chief executive  has the same meaning as in section 2(1) of the Customs and Excise 
Act 1996 
 
claimant  means a person who gives a notice under section 137 
 
control of the Customs  has the same meaning as in section 20 of the Customs and 
Excise Act 1996 
 
customs officer  has the same meaning as in section 2(1) of the Customs and Excise 
Act 1996 
 
infringing sign  means a sign that is— 
(a) identical with a trade mark in respect of which a notice has been given under 
section 137 and is used on or in physical  relation to goods that are identical 
with goods in respect of which the trade mark is registered; or 
(b) identical with such a trade mark and is used on or in physical relation to goods 
that are similar to goods in respect of which the trade mark is registered, if that use would be likely to deceive or confuse; or 
(c) similar to such a trade mark and is used on or in physical relation to goods that 
are identical with or similar to goods in respect of which the trade mark is registered, if such use would be  likely to deceive or confuse. 
 
Notice of infringing sign 
 
136 Application of sections 137 to 141 
Nothing in sections 137 to 141 applies in relation to any infringing sign that has been 
applied to goods in an overseas country by or with the licence of the owner of the 
registered trade mark to which the infringing sign relates. 
 137 Notice may be given to chief executive 
A person who is the owner of a registered trade mark may give a notice in writing to 
the chief executive that— 
(a) claims that he or she is the owner of a trade mark that is registered in respect 
of the goods specified in the notice; and 
(b) requests the chief executive to detain any goods, on or in physical relation to 
which an infringing sign is used, that are, or at any time come into, the control 
of the Customs. 
 
138 Contents of notice 
(1) A notice under section 137 must— 
(a) contain particulars in support of the request as may be prescribed; and 
(b) specify the period for which the notice is to be in force. 
(2) The period referred to in subsection (1)(b) must be— IP/N/1/NZL/T/4 
Page 40  
 
 (a) not longer than 5 years from the date of the notice; or 
(b) if the registration of the trade mark to which the notice relates will 
expire within the period of 5 years from the date of the notice, not 
longer than the period for which the current registration will last. 
 
139 Chief executive must accept or decline notice 
The chief executive must, in relation to any notice given under section 137,— 
(a) either— 
(i) accept the notice if the claimant and the notice given by the claimant 
comply with the requirements of this section and any regulations; or 
(ii) decline the notice if the claimant or the notice given by the claimant 
does not comply with the requirements of this section and any regulations; and 
(b) within a reasonable period of receiving the notice, advise the claimant whether 
the notice has been accepted or declined. 
 140 Duration of accepted notice 
A notice accepted under section 139 remains in  force for the period specified in the 
notice unless— 
(a) it is revoked by the claimant by notice in writing; or 
(b) the Court orders, in proceedings under section 153, that the notice be 
discharged. 
 
141 Licensee may require notice 
(1) Subject to agreement between a licensee of a registered trade mark and the 
owner of the trade mark, a licensee is entitled to require the owner to give 
notice under section 137 in relation to the trade mark. 
(2) If the owner refuses or neglects to do so within 2 months of being so required, 
the licensee may give notice under that subsection as if he or she were the 
owner. 
 
Investigation where notice of infringing sign 
 
142 Application of sections 143 to 146 
Nothing in sections 143 to 146 applies to goods that have been imported for private 
and domestic use. 
 143 Determination to conduct investigation 
The chief executive may conduct an investigation in order to establish whether or not the goods appear to be goods to which the notice relates if— 
(a) a notice that has been accepted under section 139 is in force; and 
(b) the chief executive considers that any imported goods that are in the control of 
Customs may be goods to which the notice relates. 
 144 Claimant to provide information for investigation 
For the purpose of an investigation under section 143, the chief executive may require 
the claimant or any other person appearing to the chief executive to have an interest in  IP/N/1/NZL/T/4 
 Page 41 
 
 
 the goods to provide, within 10 working days of being required to do so, any 
information required by the chief executive. 
 
145 Limitations on requirement to supply information 
(1) The chief executive must not require any person to provide any information 
under section 144 unless the chief executive considers that the information is 
reasonably necessary for the purpose of an investigation under section 143. 
(2) Every person who is required to provide information under section 144 has the 
same privileges in relation to the giving of the information as witnesses have 
in any court. 
(3) If a person refuses or fails to provi de information required by the chief 
executive under section 144, the chief executive may, subject to subsection (2), take that refusal or failure into account in forming any opinion under 
section 143 or in making any determination under section 146. 
 
Chief executive's determination 
 
146 Chief executive's determination 
Whether or not the chief executive conducts an  investigation, he or she must, within a 
reasonable period of forming an opinion under section 143, make a determination 
whether or not the goods appear to be goods to which the notice relates. 
 
147 Notice of determination 
If the chief executive makes a determination under section 146, the chief executive must, within any period that may be reasonably necessary to effect service, cause written notice of the determination to be served on— 
(a) the claimant; and 
(b) any other person appearing to the chief executive to have an interest in the 
goods. 
 
148 Consequences of failure to serve notice 
The detention of any goods under section 149 is not rendered illegal by a failure to serve notice under section 147. 
 
Detention of goods bearing infringing sign 
 
149 Detention of goods bearing infringing sign 
(1) If the chief executive considers that any imported goods that are in the control 
of the Customs may be goods to which a notice accepted under section 139 
relates, those goods must be detained in the custody of the chief executive or 
any customs officer until— 
(a) the chief executive is served with an order made in proceedings under 
section 152 that the notice be discharged; or 
(b) the chief executive is served with an order made in proceedings under 
section 152 that the goods be released; or 
(c) any proceedings under section 153 in respect of those goods (including 
any appeal) are determined by a d ecision that the goods are not goods IP/N/1/NZL/T/4 
Page 42  
 
 on or in physical relation to which an infringing sign is used that have 
been imported other than for private and domestic use; or 
(d) any proceedings under section 153 in respect of those goods, including 
any appeal, are abandoned; or 
(e) 10 working days have elapsed si nce notice was served under section 
147 and the chief executive has not been served with notice of 
proceedings brought under section 153 by a person other than the importer or consignee. 
(2) Subject to section 150, on the occurrence of any of the matters specified in 
subsection (1)(a) to (e), the goods must be released to the person entitled to 
them. 
(3) The chief executive may, in any particular case, extend the period referred to 
in subsection (1)(e) to 20 working days if he or she considers it appropriate to 
do so in all the circumstances. 
 
150 When detained goods may be released 
The chief executive or any customs officer must release any goods under section 149 
if— 
(a) every legal requirement as to importation of the goods is satisfied; and 
(b) every requirement made under any regulations that require the deposit of a 
security to be satisfied; and 
(c) the release of the goods is not contrary to law. 
 
151 Forfeiture of goods by consent 
(1) If goods have been detained in the custody of the chief executive or a customs 
officer, the importer or consignee of the goods may, by notice in writing to the 
chief executive, consent to the goods being forfeited to the Crown. 
(2) On the giving of a notice under subsecti on (1), the goods are forfeited to the 
Crown. 
 
Proceedings relating to goods bearing infringing sign 
 
152 Application for various orders relati ng to goods bearing infringing sign 
 The Court may, on an application by any person, make an order that— 
(a) a notice accepted under section 139 be discharged; or (b) goods detained under section 149 be released. 
 153 Proceedings to determine whether goods bear infringing sign 
(1) The Court may, on an application by any person, make a decision whether or 
not goods to which a determination under section 146 relates are goods on, or 
in physical relation to, which an infringing sign is used that have been 
imported other than for private and domestic use. 
(2) Notice of proceedings under subsec tion (1) must be served on the chief 
executive. 
(3) In proceedings under subsection (1),— 
(a) the Court must issue directions as to the service of notice on every 
person who has an interest in goods to which the proceedings relate; 
and  IP/N/1/NZL/T/4 
 Page 43 
 
 
 (b) a person who is served a notice is entitled to— 
(i) appear in those proceedings , whether or not the person was 
served with notice under section 147; and 
(ii) appeal against any order made in those proceedings, whether or 
not the person appeared in the proceedings. 
(4) An order made in proceedings  under subsection (1) takes effect— 
(a) at the end of the period within wh ich notice of an appeal may be given; 
or 
(b) on the final determination or abandonment of the proceeding on appeal 
(if notice of the appeal is given before the end of that period notice). 
 154 Powers of Court 
(1) If, in proceedings under section 153, the Court decides that any goods that are 
the subject of a determination made under section 146 are goods on or in 
physical relation to which an infringing sign is used, that have been imported 
other than for private and domestic use, the Court must make an order that the 
goods be— (a) forfeited to the Crown; or 
(b) destroyed; or 
(c) otherwise dealt with as the Court thinks fit. 
(2) In considering what order should be  made under subsection (1), the Court 
must consider— (a) whether other remedies available in proceedings for infringement of a 
registered trade mark would be adequate to compensate, and to protect 
the interests of, the claimant; and 
(b) the need to ensure that no goods on or in physical relation to which an 
infringing sign is used are disposed of in a manner that would 
adversely affect the claimant. 
(3) If more than 1 person is interested in goods, the Court may— 
(a) direct that the goods be sold or otherwise dealt with, and the proceeds 
divided; and 
(b) make any other order it thinks fit. 
(4) If, in proceedings under section 153, the Court decides that goods to which a 
determination under section 146 relates are not goods on or in physical 
relation to which an infringing sign is used, that have been imported other than for private and domestic use, the Court may make an order that a person who 
is a party to the proceedings pay compensation in such amount as the Court 
thinks fit to the importer, consignee, or the owner of goods. 
 
Inspection of goods that bear infringing sign 
 
155 Inspection of goods 
(1) The chief executive or a customs officer must permit a person who claims to 
have an interest in goods or proceedings to which section 143 or section 153 
applies to inspect the goods if the chief executive or customs officer has, in his or her possession, goods to which any of the following apply: 
(a) a notice given under section 137: IP/N/1/NZL/T/4 
Page 44  
 
 (b) an investigation under section 143: 
(c) proceedings under section 153. 
(2) A person who claims to have an interest in goods may— 
(a) inspect the goods during normal office hours; or 
(b) with the approval of the chief exec utive or customs officer, remove the 
goods or a sample of the goods to a place, for a specified period, and 
on any conditions specified by the chief executive or customs officer for the purpose of inspecting them. 
(3) Any person who wishes to inspect any goods under this section must give the 
chief executive or customs officer not less than 72 hours notice of his or her 
intention to inspect those goods, or any lesser notice period specified by the 
chief executive or customs officer for that purpose. 
 
Delegation of chief executive's powers, duties, and functions 
 
156 Delegation of chief executive's powers, duties, and functions 
(1) With the written consent of the Minister of Customs, the chief executive may, 
from time to time, either generally or particularly, by writing under his or her 
hand, delegate to a customs officer all or any of the powers, duties, and 
functions conferred or imposed on the chief executive by or under this Act. 
(2) No delegation under subsection (1) incl udes the power to delegate under that 
subsection. 
(3) Subject to any general or special directions given, or conditions imposed, from 
time to time by the Minister of Customs or the chief executive, as the case 
may be, the officer to whom any power s are delegated may exercise those 
powers in the same manner and with the same effect as if they had been 
conferred on him or her directly by this Act and not by delegation. 
(4) Every customs officer who appears to act under a delegation under this section 
is, in the absence of proof to the contrary, presumed to be acting in accordance 
with the terms of the delegation. 
(5) A delegation under this section— 
(a) may be made to a specified person or to the holder or holders for the 
time being of any specified office or class of offices; and 
(b) is revocable at will, and the delegation does not prevent the exercise of 
any power by the chief executive; and 
(c) continues in force according to its tenor, until revoked, even if the 
chief executive by whom it was made has ceased to hold office, and 
continues to have effect as if made by the successor in office of the 
chief executive. 
 157 Protection of persons acting under authority of Act 
(1) The Crown, the chief executive, or any customs officer is not under any 
criminal or civil liability in respect of anything done or omitted to be done for 
the purposes of any of sections 146 to  156 or any regulations made for the 
purposes of those sections. 
(2) Subsection (1) does not apply if the Crown, the chief executive, or the customs 
officer has acted in bad faith. 
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Subpart 4—Miscellaneous 
 
Application to Commissioner or Court? 
 
158 Application to Commissioner or Court?  
A person who may apply either to the Commissioner or the Court for a determination 
under this Act— 
(a) must, if an action concerning the trade mark in question is pending, apply to 
the Court: 
(b) may, in any other case, apply to the Commissioner who may,— 
(i) after hearing the parties, determine the question between them; or (ii) at any stage of the proceedings, refer the application to the Court. 
 
Appearance of Commissioner 
 
159 Commissioner's appearance in certain proceedings 
(1) In any legal proceedings in which th e relief sought includes alteration or 
rectification of the register, or alteration, revocation, or invalidity of a 
registered trade mark, the Commissioner— 
(a) has the right to appear and be heard; and 
(b) must appear if directed by the Court. 
(2) Instead of appearing in person, the Commissioner may, unless otherwise 
directed by the Court, give the Court a written statement— 
(a) of the following particulars that are within the Commissioner's 
knowledge: 
(i) the issues: 
(ii) the grounds of any decision given by him or her: 
(iii) the practice of the Patent Office in similar cases: 
(iv) any other matters that are relevant to the issues; and 
(b) that is signed by the Commissioner. 
(3) The Commissioner's written statement forms part of the evidence in the 
proceeding. 
 
Evidence 
 
160 Mode of giving evidence in proceedings before Commissioner 
(1) Subject to any regulations, in any proceeding under this Act before the 
Commissioner, the evidence must be given by affidavit or statutory 
declaration in the absence of directions to the contrary. 
(2) However, despite subsection (1), the Commissioner may— 
(a) take oral evidence instead of, or in addition to, evidence by affidavit or 
declaration; or 
(b) permit a deponent or declarant to be cross-examined on his or her 
affidavit or declaration. 
(3) Any such statutory declaration may, in the case of appeal, be used before the 
Court instead of evidence by affidavit, an d, if so used, has all the incidents and 
consequences of evidence by affidavit. IP/N/1/NZL/T/4 
Page 46  
 
 (4) In any proceeding under this Act before the Commissioner, the Commissioner 
may administer oaths to any witness,  and may in the prescribed manner 
require the attendance of any witness and discovery and production of 
documents. 
(5) Any evidence given on oath before the Commissioner is deemed to be given in 
a judicial proceeding for the purposes of sections 108 and 109 of the Crimes 
Act 1961. 
(6) Section 111 of the Crimes Act 1961 applies to every affidavit and statutory 
declaration made for the purposes of this Act. 
 
161 Evidence of entries, documents, etc 
(1) A certificate signed by the Commissioner that certifies that any entry that he 
or she is authorised by or under this Act to make has or has not been made, or 
that any other thing that he or she is so authorised to do has or has not been 
done, is prima facie evidence of the certified matters. 
(2) A copy of, or extract from, a register ed document particulars of which have 
been entered in any device or facility referred to in section 165(2) certified to be a true copy or extract by the Commis sioner is admissible in evidence in 
legal proceedings to the same extent as the original document. 
(3) A person may, on payment of any fees that are prescribed, require the 
Commissioner to give or certify a co py of any entry in the register. 
(4) The notification in the prescribed  manner of the doing, exercise, or 
performance of an act, power, function, or duty that the Commissioner is 
directed, authorised, or empowered to do under this Act or otherwise by law is 
prima facie evidence that it was lawfully done, exercised, or performed. 
 
162 Registration is prima facie evidence of validity 
In all legal proceedings that relate to a registered trade mark the fact that a person is 
registered as owner of the trade mark is prima facie evidence of the validity of the 
original registration of the trade mark and of all later assignments and transmissions. 
 
163 Appeal against decision of Commissioner that relates to assignments and 
transmissions A document or instrument in respect of which no entry has been made in the register must not be admitted in evidence in a Court as proof of the title to a trade mark— (a) except for the purposes of an applic ation under section 76 or of an appeal 
under section 170; or 
(b) unless the Court otherwise directs. 
 164 Trade usage must be considered 
In an action or proceeding relating to a tr ade mark or trade name, the Court or the 
Commissioner, as the case may be, must admit evidence of— 
(a) the usages of the trade concerned; and 
(b) any relevant trade mark or trade name or get-up legitimately used by other 
persons. 
  IP/N/1/NZL/T/4 
 Page 47 
 
 
 165 Certificate of validity 
(1) In a legal proceeding in which the validity of the registration of a registered 
trade mark comes into question, the Court may certify a decision that is in 
favour of the owner of the trade mark. 
(2) The owner of a registered trade mark who obtains a final order or judgment in 
his or her favour in a later legal proceeding in which the validity of the 
registration of the trade mark comes into question again is entitled to his or her full costs, charges, and expenses as between solicitor and client if— 
(a) the Court has already certified a decision in favour of the owner under 
subsection (1); and 
(b) the Court does not certify in the later proceeding that the owner is not 
entitled to those costs, charges, and expenses. 
 
Costs 
 
166 Costs 
(1) In any proceedings before the Commissioner under this Act, the 
Commissioner may,— 
(a) by order, award to any party costs that the Commissioner considers 
reasonable; and 
(b) direct how and by what parties they are to be paid. 
(2) An order under subsection (1) may be— 
(a) entered as a judgment of the Court; and 
(b) with the leave of the Court, may be enforced accordingly. 
 
167 Security for costs 
(1) If a party to any legal proceedings under this Act does not reside, and does not 
carry on business, in New Zealand, the Commissioner or the Court, as the case 
may be, may require the person to give security for the costs of the 
proceedings. 
(2) If the person does not comply with subsection (1), the Commissioner or the 
Court may treat the proceedings as abandoned by the person and determine the 
matter accordingly. 
 168 No costs on appeal against refusal to certify or to authorise use 
Despite section 167, the Commissioner does not have any jurisdiction to award costs 
to or against any party on an appeal to the Commissioner against a refusal of the 
owner of a certification trade mark to certify goods or services or to authorise the use 
of the trade mark. 
 169 Costs of Commissioner in proceedings before Court 
In all Court proceedings under this Act, the Commissioner's costs are in the discretion of the Court. 
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Page 48  
 
 Appeals 
 
170 Appeals in relation to Commissioner's decisions 
A person who is aggrieved by a decision of the Commissioner under this Act may appeal to the Court. 
 
171 Notice of appeal 
Notice of an appeal under section 170 must be filed in the Court and served on the 
Commissioner within 20 working days after the day on which the decision appealed 
against was given. 
 172 Hearing of appeal 
(1) On an appeal, the Court must hear the parties and the Commissioner. 
(2) Appeals must be heard only on the materials stated by the Commissioner 
unless a party, either in the manner prescr ibed or by special leave of the Court, 
brings forward further material for the consideration of the Court. 
(3) In the case of an appeal against the acceptance of an application or the 
registration of a trade mark,— 
(a) No further grounds of objection are permitted by the opponent or the 
Commissioner, other than those stated by the opponent, except by 
leave of the Court; and 
(b) if further grounds of objection are permitted, the applicant's application 
may be withdrawn without payment of the costs of the opponent on 
giving notice as prescribed. 
 
173 Determination of appeals 
 In determining an appeal, the Court may do any of the following things: 
(a) confirm, modify, or reverse the Commissioner's decision or any part of it: 
(b) exercise any of the powers that could have been exercised by the 
Commissioner in relation to the matter to which the appeal relates: 
(c) in the case of an appeal against the registration of a trade mark, permit the 
trade mark proposed to be registered to be modified in any manner that does 
not substantially affect its identity. However, in any such case, the trade mark 
as so modified must be advertised in the prescribed manner before being 
registered. 
 
174 Provisions pending determination of appeal 
The decision to which an appeal under this Act relates remains in full force pending 
the determination of the appeal unless the Court otherwise orders. 
 
Part 5—Administrative pr ovisions and miscellaneous 
 
Subpart 1—Commissioner and Assistant Commissioners of Trade Marks  
 
175 Commissioner and Assistant Co mmissioners of Trade Marks 
(1) There must be— 
(a) a Commissioner of Trade Marks who must be appointed under the 
State Sector Act 1988; and  IP/N/1/NZL/T/4 
 Page 49 
 
 
 (b) as many Assistant Commissioners of Trade Marks as may be necessary 
for the purposes of this Act, each of whom must be appointed under the State Sector Act 1988; and 
(c) other officers and employees that may be necessary for the purposes of 
this Act, each of whom must be appointed under the State Sector Act 
1988. 
(2) Subject to the control of the Commissioner, an Assistant Commissioner has 
and may exercise the powers, duties, and functions of the Commissioner under 
this Act. 
(3) The fact that an Assistant Commissioner exercises those powers, duties, or 
functions is conclusive evidence of the authority to do so. 
(4) The person holding office as Commissioner of Trade Marks under the Trade 
Marks Act 1953 and every person holding office as an Assistant 
Commissioner under that Act, immediately before the commencement of this 
Act, is deemed to have been appointed as Commissioner of Trade Marks or as 
an Assistant Commissioner of Trade Marks, as the case may be, in accordance 
with this section. 
 
176 Hearing before exercise of Commissioner's discretion 
The Commissioner must not exercise any of the Commissioner's discretionary or 
other powers under this Act or any regulations made under this Act adversely to any 
person without (if required to do so within the prescribed time) giving the person an opportunity of being heard. 
 
Subpart 2—Advisory committee 
 
177 Advisory committee 
(1) The Commissioner must appoint an advisory committee. 
(2) The Commissioner may alter the advisory committee. 
 
178 Function of advisory committee 
The function of the advisory committee is  to advise the Commissioner whether the 
proposed use or registration of a trade mark that is, or appears to be, derivative of a 
Maori sign, including text and imagery, is, or is likely to be, offensive to Maori. 
 
179 Membership of advisory committee 
(1) The Commissioner may, at any time, appoint or discharge a member of the 
advisory committee and, if the Commissioner thinks fit, appoint another 
member in a discharged member's place. 
(2) A person must not be appointed as a member of the advisory committee 
unless, in the opinion of the Commissioner, the person is qualified for 
appointment, having regard to that person's knowledge of te ao Maori (Maori 
worldview) and tikanga Maori (Maori protocol and culture). 
(3) A member of the advisory committee may resign office by notice in writing to 
the Commissioner. 
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Page 50  
 
 180 Advisory committee may regulate own procedure 
Subject to any direction given by the Commissioner, the advisory committee may 
regulate its own procedure. 
 
Subpart 3—Register of trade marks 
 
General 
 
181 Register of trade marks 
(1) The Commissioner must ensure that a register of trade marks registered in 
New Zealand is kept in New Zealand. 
(2) The register may be kept in any manner that the Commissioner thinks fit, 
including, either wholly or partly, by means of a device or facility— 
(a) that records or stores information electronically or by other means; and 
(b) that permits the info rmation so recorded or stored to be readily 
inspected or reproduced in usable form. 
(3) The register is prima facie evidence of  any matters required or authorised by 
or under this Act to be entered in it. 
 182 Contents of register 
 The register must contain the following: 
(a) all registered trade marks with the names and addresses of their owners: (b) the actual date of registration and the deemed date of registration and the date 
of application in New Zealand, if any: 
(c) assignments and transmissions: (d) the names and addresses of all licensees: 
(e) disclaimers: 
(f) conditions: 
(g) any other prescribed matters relating to registered trade marks. 
 
183 No notices of trusts may be entered in register 
No notice of any trust may be entered in the register, and the Commissioner is not affected by any such notice. 
 
Search of register 
 
184 Search of register 
(1) A person may, on payment of any prescribed fees, search the register— 
(a) during the hours when the office of the Commissioner is open to the 
public for the transaction of business on a working day; and 
(b) at any other time that the Commissioner allows. 
(2) A certified copy, sealed with the seal of the Patent Office, of an entry in the 
register must, on payment of any prescribed fee, be given to any person who 
requires the certified copy. 
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 Page 51 
 
 
 Offences relating to register 
 
185 Offence to make false entry in register 
(1) Every person commits an offence who— 
(a) makes or causes to be made a false entry in the register or a writing 
falsely purporting to be a copy of an entry in the register knowing the 
entry or writing to be false; or 
(b) produces or tenders or causes to be produced or tendered in evidence 
any such writing, knowing the entry or writing to be false. 
(2) Every person who is convicted of an o ffence against subsecti on (1) is liable on 
conviction to imprisonment for a term not exceeding 2 years. 
 
186 Offences relating to false representation of trade mark 
(1) Every person commits an offence who represents that— 
(a) a sign, or the whole or a part of a trade mark, is a registered trade mark 
when it is not: 
(b) a registered trade mark is register ed in respect of any goods or services 
when it is not: 
(c) the registration of a trade mark gives an exclusive right to its use when 
it does not. 
(2) Every person who is convicted of an o ffence against subsection (1) is liable on 
conviction to a fine not exceeding $1,000. 
(3) For the purposes of this section, a reference to— 
(a) registered is to be read as a reference to registered under this Act: 
(b) registration is to be read as a reference to registration in the register. 
(4) Subsection (3) does not apply if th e relevant reference relates to the 
registration of a trade mark under the law in force in a country outside New 
Zealand. 
 
Subpart 4—Miscellaneous 
 
No compensation  
 
187 No compensation for diminution in rights attaching to trade mark 
No person is entitled to compensation from the Crown in respect of any diminution in 
the rights that attach to a trade mark that may arise by virtue of the enactment of this 
Act (for example, the removal of the trade mark from the register). 
 
Patent Office 
 
188 Opening and closing of Patent Office 
(1) The Commissioner may, by notice in the prescribed manner,— 
(a) fix the hours during which the Patent Office is open for the transaction 
of public business under this Act; and 
(b) declare the Patent Office closed for the transaction of public business 
on any day. IP/N/1/NZL/T/4 
Page 52  
 
 (2) An act or proceeding is in time if— 
(a) the time prescribed for doing the act or taking the proceeding expires 
on a day when the Patent Office is closed; and 
(b) the act or proceeding cannot be done or taken on that day because the 
Patent Office is closed; and 
(c) the act or proceeding is done or taken on the next day when the Patent 
Office is open. 
 
189 Closing of Patent Office at short notice 
(1) Despite section 188, the Commissioner may, without giving notice of the 
closure of the Patent Office in the prescribed manner, declare the Patent Office 
closed for the transaction of business if,— (a) because of an emergency or other temporary circumstances, the 
Commissioner is satisfied that it is or will be necessary or desirable to close 
the Patent Office on any day; and 
(b) it is not practicable to give not ice of the closure in the prescribed 
manner. 
(2) If the Commissioner proposes to decl are or has declared the Patent Office 
closed under subsection (1), the Commissioner must, if practicable, display a 
public notice of that fact in or on the building in which the Patent Office is 
situated. 
(3) As soon as practicable, the Commissioner must also cause a copy of the public notice, or (if no such notice was displayed)  a notice of the exercise of his or her 
powers under this section, to be published in the prescribed manner. 
 
Personal representatives 
 
190 Recognition of agents 
(1) Anything that must be done by or to a person under this Act, in relation to a 
trade mark, may be done by or to the person's expressly authorised agent. 
(2) Subsection (1) applies only if the agent is not a prescribed class of person. 
 191 Declarations, etc, on behalf of certain persons 
(1) Any of the relevant persons described in subsection (2) may make a 
declaration and do anything required or permitted by or under this Act in the name and on behalf of a person who is not 18 years or over or is incapable of 
making a declaration or doing that thing. 
(2) The relevant persons referred to in subsection (1) are— 
(a) the person's guardian: 
(b) the person's statutory administrator, if any: 
(c) a person appointed by the Court who has jurisdiction in respect of the 
person's property. 
(3) An appointment may be made by the Co urt for the purposes of this section on 
the application of— 
(a) any person acting on behalf of a person who is not 18 years or over or 
is incapable of making a declaration or doing anything required or 
permitted by or under this Act; or  IP/N/1/NZL/T/4 
 Page 53 
 
 
 (b) any other person interested in th e making of the declaration or the 
doing of the thing. 
 
Substitution 
 
192 Substitution of person other than applicant generally 
(1) This section applies to the following applications: 
(a) application for cancellation or alteration under section 62: 
(b) application for revocation under section 65: 
(c) application for a declaration of invalidity under section 73: 
(d) application for rectificati on of register under section 76. 
(2) An application referred to in subsection (1) may proceed in the name of any 
person other than the applicant if,— 
(a) after the applicant has filed the application, the right or interest on 
which the applicant relied to file the application becomes vested in 
another person; and 
(b) the other person— 
(i) notifies the Commissioner in writing that the right or interest is 
vested in him or her; and 
(ii) does not withdraw the application. 
 193 Substitution of person other than  applicant on notice of opposition 
A notice of opposition to an application under section 47 may proceed in the name of 
any other person if,— 
(a) after the person has given notice, the right or interest on which that person 
relied to give notice becomes vested in another person; and 
(b) that other person— 
(i) notifies the Commissioner, in writing, that the right or interest is vested 
in him or her; and 
(ii) does not withdraw the opposition. 
 
Amendment of other documents 
 
194 Amendment of documents other than application 
The Commissioner may, at the written request of the person who has made an 
application (other than an application for the registration of a trade mark), or filed a 
notice or other document for the purposes of th is Act, or, at the written request of the 
person's agent, amend the application, notice or document,— 
(a) to correct a clerical erro r or an obvious mistake; or 
(b) if the Commissioner is of the opinion that it is fair and reasonable in all the 
circumstances of the case to do so. 
 
Fees 
 
195 Fees 
(1) Any sum paid to the Commissioner by mistake, or any sum the payment of 
which is not required by this Act, may be refunded by the Commissioner. IP/N/1/NZL/T/4 
Page 54  
 
 (2) All money that is so refunded must be paid out of public money without 
further appropriation than this Act. 
 
Service of notices 
 
196 Application of section 197 
 Section 197 does not apply to— 
(a) notices or other documents served or given in any proceedings in a court: 
(b) notices or other documents served or given in accordance with another 
procedure specified in this Act. 
 197 Method of service of notices 
(1) A notice or any other document that is required or authorised by this Act to be 
served on or given to a person may be served or given by— 
(a) delivering it to the person or the person's agent; or 
(b) leaving it at the person's or the person's agent's usual or last known 
residence or business; or 
(c) posting it in a letter addressed to the person or the person's agent by 
name at that residence or business address. 
(2) If the person is deceased, a notice or other document may be served on or 
given to the person's personal representative. 
(3) If a notice or other document is sent to any person by post, it is deemed to 
have been delivered to that person at the time when the letter would in the 
ordinary course of post be delivered and, in proving the delivery, it is 
sufficient to prove that the letter was properly addressed and posted. 
 
Annual report 
 
198 Annual report by Commissioner of Patents 
The Commissioner of Patents must, in his or her annual report with respect to the 
operation of the Patents Act 1953, include a report with respect to the operation of this 
Act as if it formed a part of or was included in that Act. 
 
Regulation-making powers 
 
199 Regulations 
The Governor-General may, by Order in Council, make regulations for all or any of the following purposes: 
 
 Classification of goods or services 
(a) prescribing procedures, requirements, and other matters, not inconsistent with 
this Act, in respect of the amended or  substituted classification of goods or 
services for the purposes of the registration of trade marks under this Act: 
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 Registration of trade marks 
(b) prescribing procedures, requirements, and other matters, not inconsistent with 
this Act, in respect of the registration, or renewal or alteration or cancellation, 
of trade marks under this Act, including— 
(i) providing for the division of an application for the registration of a 
trade mark into several applications: 
(ii) providing for the merging of sepa rate applications or registrations: 
(iii) providing for the registration of a series of trade marks: 
  
Licensees 
(c) prescribing procedures, requirements, and other matters, not inconsistent with 
this Act, in respect of the registration of licensees: 
  
Agents 
(d) prescribing classes of persons wh om the Commissioner may refuse to 
recognise as agents in respect of proceedings: 
  
Importation of infringing goods 
(e) prescribing procedures, requirements, and other matters, not inconsistent with 
this Act, in respect of the importation of infringing goods under this Act, 
including— 
(i) requiring a person to give security or an indemnity of an amount, 
subject to any conditions determined by the chief executive: 
(ii) providing for exceptions to any requirement to give security or an 
indemnity imposed by any regulations made under subparagraph (i): 
(iii) providing for the disposition of any security given under any 
regulations made under subparagraph (i): 
(iv) prescribing how goods that are forfeited to the Crown under section 
151 or section 154 are to be disposed of: 
  
Proceedings 
(f) prescribing procedures, requirements, and other matters, not inconsistent with 
this Act, in respect of proceedings under this Act, including— 
(i) providing for the payment of witnesses' expenses: 
(ii) imposing fines not exceeding $1,000 for the failure or refusal of a 
person to attend and give evidence: 
  
Register 
(g) prescribing procedures, requirements, and other matters, not inconsistent with 
this Act, in respect of the register and its operation, including matters relating 
to— 
(i) access to the register: 
(ii) the location of and hours of access to the register: 
  
Fees 
(h) prescribing matters in respect of which fees are payable under this Act and the 
amounts of those fees: 
  IP/N/1/NZL/T/4 
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 Extensions of time 
(i) prescribing time and extensions of time in respect of any matters under this 
Act: 
  
Forms 
(j) prescribing forms for the purposes of this Act: 
  
Notices 
(k) prescribing procedures, requirements, and other matters, not inconsistent with 
this Act, in respect of notices under this Act, including prescribing the matters 
in respect of which notices are required under this Act: 
  
Patent Office 
(l) regulating, in a manner not inconsistent with this Act, the business of the 
Patent Office in relation to trade marks and all things that are under the 
direction or control of the Commissioner: 
  
General 
(m) providing for any other matters contempl ated by this Act, necessary for its 
administration, or necessary for giving it full effect. 
 200 Orders in Council relating to convention countries 
For the purpose of giving effect to an international agreement or arrangement to 
which New Zealand is a party or that app lies to New Zealand, the Governor-General 
may, by Order in Council, declare that an entity specified in the order that is a party to the agreement or arrangement or to which the agreement or arrangement applies is, 
for the purposes of all or any of the provisions of this Act, a convention country. 
 
Amendments 
 
201 Acts amended 
The Acts specified in the Schedule are amended in the manner indicated in that schedule. 
 
Transitional and savings provisions 
 
202 Repeal of Trade Marks Act 1953 
(1) The Trade Marks Act 1953 (1953 No 66) is repealed. 
(2) Despite the repeal of the Trade Marks Act 1953 by subsection (1), the 
Prohibited Marks Order 1961 (SR 1961/120) and the Prohibited Marks Order 
1982 (SR 1982/127)— 
(a) continue in force as if that Act had not been repealed; and 
(b) may be amended or revoked in the same manner in which they could 
have been amended or revoked under that Act. 
  IP/N/1/NZL/T/4 
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 203 Transitional provision for certain applications and proceedings 
(1) Despite its repeal, the Trade Marks Act 1953 continues in force and applies in 
respect of— 
(a) an application for the registration of a trade mark that was received by 
the Commissioner before the commencement of this Act until the trade 
mark is registered and any proceedings related to that application, 
whether or not the proceedings were commenced before the commencement of this Act: 
(b) an application for the alteration, renewal, assignment, expunction, or 
cancellation of a registered trade mark that was received by the 
Commissioner before the commencement of this Act: 
(c) any proceedings that were commenced under that Act before the 
commencement of this Act. 
(2) This section does not apply to applications in respect of defensive trade marks. 
(3) Subsection (1)(a) does not apply in respect of an assignment or transmission of 
an application for the registration of a trade mark under section 12. 
 
204 Transitional provision for notices gi ven under section 54B of Trade Marks Act 
1953 
If, before the commencement of this Act, an owner of a registered trade mark gave a 
notice to the chief executive under section 54B of the Trade Marks Act 1953,— 
(a) that notice is to be treated as if it  were a notice given under section 137 of this 
Act; and 
(b) subpart 3 of Part 4 of this Act applies accordingly in respect of that notice. 
 
205 Transitional provision for fees for defensive trade marks 
The Commissioner must refund any fee paid in respect of a pending application for a defensive trade mark that was received by the Commissioner before the 
commencement of this Act. 
 
206 Certificate of validity of contested registration 
A certificate of validity of registration gi ven under section 61 of the Trade Marks Act 
1953 has effect as if given under section 165(2) of this Act. 
 207 Orders in Council relating to convention countries under Trade Marks Act 1953 
An Order in Council made under section 72 of the Trade Marks Act 1953 has effect as 
if it had been made under section 200 of this Act. 
 
208 Status of trade marks registered before commencement of Act 
(1) Except as provided in subsection (2), nothing in this Act invalidates the 
original registration of a trade mark that, immediately before the 
commencement of this Act, was valid. 
(2) However, subsection (1) does not apply to the extent that a registered trade 
mark referred to in that subsection is declared to be invalid under section 74. IP/N/1/NZL/T/4 
Page 58  
 
 (3) A trade mark that was registered under the Trade Marks Act 1953, including a 
defensive trade mark, and that, immediately before the commencement of this Act, was valid— 
(a) is deemed to be registered under this Act as a trade mark, whether 
registered in Part A or Part B of the register; and 
(b) retains its original date of registration; and 
(c) retains its existing registrati on period, under the Trade Marks Act 
1953, of 7 or 14 years, as the case may be, but, at the expiration of that 
registration period, section 58 applies. 
(4) A trade mark that was registered under the Trade Marks Act 1953, other than a 
defensive trade mark, within the period of 5 years before the coming into force 
of this Act, cannot be revoked under section 66(1)(a) until 5 years after its actual date of registration. 
(5) A trade mark that was registered under the Trade Marks Act 1953, other than a 
defensive trade mark, before the period of 5 years before the coming into force 
of this Act, cannot be revoked under section 66(1)(b) if use of the trade mark 
has been suspended for an uninterrupted period of 5 years and the use was suspended before the commencement of this Act. 
(6) A trade mark that was registered under the Trade Marks Act 1953, other than a 
defensive trade mark, may be revoked under section 66(1)(a) or (b) after the 
periods specified in subsections  (4) and (5) have elapsed. 
(7) A trade mark that was registered as a defensive trade mark under the Trade 
Marks Act 1953 cannot be revoked under section 66(1)(a) or (b) until 3 years 
after the coming into force of this Act. 
 
209 Status of notes, etc, on register before commencement of Act 
(1) Notes on the register that indicate that a trade mark is associated with another 
trade mark cease to have effect on the commencement of this Act. 
(2) Any other note, disclaimer, or conditi on entered on the register in relation to a 
trade mark registered under the Trade Marks Act 1953 is deemed to be entered on the register under this Act. 
______________________________________ 
  IP/N/1/NZL/T/4 
 Page 59 
 
 
 Schedule 
 
Acts amended 
 Administration Act 1969  (1969 No 52) 
Omit from section 67(1) the words “section 58 of the Trade Marks Act 1953” and 
substitute the words “section 52 of the Trade Marks Act 2002”. 
 
Animal Remedies Act 1967  (1967 No 51) 
Omit from section 66 the words “Trade Marks Act 1953” and substitute the words 
“Trade Marks Act 2002”. 
 Commerce Act 1986  (1986 No 5) 
Repeal section 45(2)(c) and substitute: 
“(c) the Trade Marks Act 2002; or”. 
Omit from section 45(3)(c) the words “section 26 of the Trade Marks Act 1953” and 
substitute the words “section 32 of the Trade Marks Act 2002”.  
Copyright Act 1994  (1994 No 143) 
Omit from section 131(5) the word “summary”. 
 
Omit from section 131(5)(a) and (b) the expression “3 months” and                        substitute the expression “5 years”. 
 
Insert, after section 131: 
“131A Time for laying information  
Despite section 14 of the Summary Proceedings Act 1957, an information in 
respect of an offence against section 131 may be laid at any time within 3 
years of the time when the matter of the information arose.” 
 Insert, after section 133: 
“133A Evidence in certain proceedings  
“(1) In proceedings for an offence against section 131, whether by way of a 
hearing in the first instance or by way of appeal or otherwise, the court may 
receive an affidavit as evidence of the existence and ownership of copyright. “(2) A party to the proceedings may apply to the court to require a person 
whose evidence has been given by affi davit to attend the proceedings for the 
purposes of cross-examination; and the court may make an order accordingly.” 
 
Repeal paragraph (c)(ii) of the definition of pirated copy in section 135. 
 
Insert, after section 141: 
“141A Forfeiture of goods by consent 
If any pirated copies have been detained  in the custody of the Chief Executive 
or any customs officer, the importer or consignee of the copies may, by notice in writing to the Chief Executive, consent to the copies being forfeited to the 
Crown and, on the giving of such notice,  the copies will be forfeited to the 
Crown.” IP/N/1/NZL/T/4 
Page 60  
 
  
Crown Proceedings Act 1950  (1950 No 54) 
Omit from section 7(1) the expression “Trade Marks Act 1953” and substitute the 
expression “Trade Marks Act 2002”. 
 
Disputes Tribunals Act 1988  (1988 No 110) 
Omit from the definition of intellectual pr operty in section 2 the expression “Trade 
Marks Act 1953” and substitute the expression “Trade Marks Act 2002”. 
 
Fair Trading Act 1986  (1986 No 121) 
 
Omit from the definition of trade mark in section 16(3) the expression “Trade Marks Act 1953” and substitute the expression “Trade Marks Act 2002”. 
 
Flags, Emblems, and Names Protection Act 1981  (1981 No 47) 
Omit from paragraph (g) of the definition of registering authority in section 2 the 
expression “Trade Marks Act 1953” and subs titute the expression “Trade Marks Act 
2002”. 
 
Repeal section 12(4)(b) and substitute: 
“(b) section 24 of the Trade Marks Act 2002 (which relates to the representation in 
trade marks of Her Majesty or any members of the Royal Family).” 
 
Geographical Indications Act 1994  (1994 No 125) 
Omit from section 5(2)(c) the expression “Trade Marks Act 1953” and substitute the expression “Trade Marks Act 2002”. 
 
Pesticides Act 1979  (1979 No 26) 
Omit from section 75 the expression “Trade Marks Act 1953” and substitute the 
expression “Trade Marks Act 2002”. 
 
Privacy Act 1993  (1993 No 28) 
Add to Part 1 of the Schedule 2: 
 
Trade Marks Act 2002 Section 181  
 
Patents Act Sections 83 and 84  
 
Designs Act 1953 Sections 25 and 27  
 
Public Works Act 1981  (1981 No 35) 
Omit from the definition of intellectual pr operty in section 2 the expression “Trade 
Marks Act 1953” and substitute the expression “Trade Marks Act 2002”. 
 
Smoke-free Environment Act 1990  (1990 No 108) 
Omit from the definition of trade mark in section 2 the expression “Trade Marks Act 
1953” and substitute the expression “Trade Marks Act 2002”. 
  IP/N/1/NZL/T/4 
 Page 61 
 
 
 Standards Act 1988  (1988 No 5) 
Omit from section 10(2)(f) the expression “Trade Marks Act 1953” and substitute the 
expression “Trade Marks Act 2002”. 
 
Summary Proceedings Act 1957  (1957 No 87) 
Insert in Part 2 of the Schedule 1 in the appropriate columns and in their appropriate 
alphabetical order: 
 
Copyright Act 1994 131  Offences relating to making or 
      dealing with infringing objects  
Trade Marks Act 2002 120 to 124 Offences relating to  
counterfeiting or falsely using registered trade marks.  
 
 
Omit from Part 2 of the Schedule 1 the item relating to the Trade Marks Act 1953. 
 
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