Trade Marks Amendment Regulations 2019
Patsy Reddy, Governor-General
Order in Council
At Wellington this 16th day of September 2019
Present:
Her Excellency the Governor-General in Council
These regulations are made under section 199(1)(h) and (2)  of the Trade Marks Act
2002 on the advice and with the consent of the Executive Council.
Contents
Page
1 Title 1
2 Commencement 1
3 Principal regulations 2
4 Regulation 3 amended (Interpretation) 2
5 Schedule 1 replaced 2
Schedule
Schedule 1 replaced2
Regulations
1 Title
These regulations are the Trade Marks Amendment Regulations 2019.
2 Commencement
These regulations come into force on 13 February 2020.2019/219
13 Principal regulations
These regulations amend the Trade Marks Regulations 2003 (the principal
regulations ).
4 Regulation 3 amended (Interpretation)
In regulation 3, insert in their appropriate alphabetical order:
relevant preliminary advice , in relation to an application to register a trade
mark, means preliminary advice that —
(a) the applicant for registration applied for under regulation 37; and
(b) the Commissioner provided no more than 3 months before the applica-
tion for registration was made; and
(c) relates to the same trade mark, class, statement of goods or services, and
transliteration or translation of foreign characters or words (if any), as
the application for registration does (whether or not the advice also
relates to other classes, goods, or services)
relevant search advice , in relation to an application to register a trade mark,
means search advice that —
(a) the applicant for registration applied for under regulation 37; and
(b) the Commissioner provided no more than 3 months before the applica-
tion for registration was made; and
(c) relates to the same trade mark, class, statement of goods or services, and
transliteration or translation of foreign characters or words (if any), as
the application for registration does (whether or not the advice also
relates to other classes, goods, or services)
5 Schedule 1 replaced
Replace Schedule 1 with the Schedule 1 set out in the Schedule of these regula-
tions.
Schedule
Schedule 1 replaced
r 5
Schedule 1
Fees
r 167
Activity Fee ($)
1 Request for preliminary advice only, per class 50
2 Request for search advice only, per class 50
3 Request for preliminary advice and search advice, per class 50r 3 Trade Marks Amendment Regulations 2019 2019/219
2Activity Fee ($)
4 Application to register a trade mark, per class, if —
(a) the Commissioner has provided relevant preliminary advice and
relevant search advice to the applicant; and
(b) the application is not an application to add the class under
regulation 4350
5 Application to register a trade mark or series of trade marks, per class,
if—
(a) the specification of goods or services consists only of 1 or more
descriptions that have been approved by the Commissioner for
inclusion in trade mark application specifications for that class;
and
(b) in the case of an application to register a trade mark, the
Commissioner has not provided relevant preliminary advice or
has not provided relevant search advice (or has provided
neither) to the applicant; and
(c) the application is not an application to add the class under
regulation 4370
6 Any other application to register a trade mark or series of trade marks,
including to add a class under regulation 43, per class100
7 Renewal of trade mark registration, per class 200
8 Notice of opposition to trade mark registration 350
9 Hearing by Commissioner for each party 850
10 Application for revocation of trade mark registration 350
11 Application for declaration of invalidity of registration 350
Michael Webster,
Clerk of the Executive Council.
Explanatory note
This note is not part of the regulations, but is intended to indicate their general effect.
These regulations, which come into force on 13 February 2020, amend the Trade
Marks Regulations 2003 (the principal regulations ) by altering fees payable to the
Commissioner of Trade Marks.
Fees for requests for preliminary advice as to whether a trade mark has a distinctive
character, or for search advice as to whether an identical or a similar mark is already
on the trade marks register, are altered as follows:
• requests for preliminary advice without search advice: increase from $40 to
$50 per class of goods or services:2019/219 Trade Marks Amendment Regulations 2019 Explanatory note
3• requests for search advice without preliminary advice: increase from $40 to
$50 per class:
• requests for combined preliminary advice and search advice: decrease from
$80 to $50 per class.
Fees for applications to register trade marks or renew trade mark registrations are
decreased as follows:
• applications to register a trade mark, if relevant preliminary advice and relevant
search advice were both provided and the application is not for the addition of
a class of goods or services to an existing application: decrease from $150 to
$50 per class:
• other applications to register a trade mark or series of trade marks, if the speci-
fication of goods or services consists only of 1 or more descriptions that have
been approved by the Commissioner and the application is not for the addition
of a class to an existing application: decrease from $150 to $70 per class:
• all other applications to register a trade mark or series of trade marks, including
applications to add a class to an existing application: decrease from $150 to
$100 per class:
• applications to renew trade mark registrations: decrease from $350 to $200 per
class.
Regulatory impact assessment
The Ministry of Business, Innovation, and Employment produced a regulatory impact
assessment on 16 November 2018 to help inform the decisions taken by the Govern-
ment relating to the contents of this instrument.
A copy of this regulatory impact assessment can be found at—
• https://www.mbie.govt.nz/have-your-say/consultation-on-changes-to-fees-
charged-by-the-intellectual-property-office-of-nz/
• http://www.treasury.govt.nz/publications/informationreleases/ria
Issued under the authority of the Legislation Act 2012.
Date of notification in Gazette : 19 September 2019.
These regulations are administered by the Ministry of Business, Innovation, and Employment.
Wellington, New Zealand:
Published under the authority of the New Zealand Government—2019Explanatory note Trade Marks Amendment Regulations 2019 2019/219
4