Trade Marks Amendment Act 2005

1: Title
1: This Act is the Trade Marks Amendment Act 2005.
2: In this Act, the Trade Marks Act 2002 the principal Act
2: Commencement
This Act comes into force on the day after the date on which it receives the Royal assent.
3: New section 17 substituted
The principal Act is amended by repealing section 17
17: Absolute grounds for not registering trade mark: general
1: The Commissioner must not register as a trade mark or part of a trade mark any matter—
a: the use of which would be likely to deceive or cause confusion; or
b: the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court; or
c: the use or registration of which would, in the opinion of the Commissioner, be likely to offend a significant section of the community, including Maori.
2: The Commissioner must not register a trade mark if the application is made in bad faith.
3: Despite subsection (1)(b) Smoke-free Environments Act 1990 1953 No 66 s 16
4: Non-distinctive trade mark not registrable
Section 18(1)(c) (unless the trade mark is a certification trade mark)
5: Registrability of identical or similar trade mark
1: Section 25(1) paragraph (a)
a: it is identical to a trade mark ( trade mark B section 34 or section 36
i: in respect of the same goods or services; or
ii: in respect of goods or services that are similar to those goods and services, and its use is likely to deceive or confuse; or .
2: Section 25(1)(b) section 34 or section 36
6: Application: how made
Section 32 subsection (1)
1: A person claiming to be the owner of a trade mark or series of trade marks may, on payment of the prescribed fee (if any), apply in the prescribed manner (if any) for the registration of the 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.
7: Commissioner's requirements in relation to applications without priority
Section 35(a) section 34(1) or under section 36
8: Withdrawal, etc, of application
Section 37(2) paragraph (b)
b: an error or omission if, in the Commissioner's opinion, the correction of the error or omission does not materially alter the meaning or scope of the application.
9: Onus of proof for revocation of registration of trade mark for non-use
Section 67(a) and or
10: Presumption of validity of registration of trade mark
Section 75(b) 17(1) or (2)
11: Application for registration of licensee
Section 83 subsection (1)
1: A person who is not the owner of a trade mark may, with or without conditions, be registered as licensee of the trade mark in respect of—
a: any of the goods or services for which the trade mark is registered; or
b: if the trade mark is not registered but an application has been made, any of the goods or services to which the application relates.
12: Cancellation of registration of licensee
Section 87 subsection (1)
1: The Commissioner must cancel the registration of a person as a licensee of a trade mark—
a: in the case of registration as a licensee under section 83(1)(a)
b: in the case of registration as a licensee under section 83(1)(b)
13: Infringement where identical or similar sign used in course of trade
Section 89(1)(c) registered registered,
14: Evidence of entries, documents, etc
Section 161(2) 165(2) 181(2)
15: Contents of register
Section 182 paragraph (b)
b: the actual date of registration, the deemed date of registration, and the date of application in New Zealand: .
16: Substitution of person other than applicant on notice of opposition
The heading to section 193 applicant opponent
17: Certificate of validity of contested registration
Section 206 165(2) 165(1)
18: Status of trade marks registered before commencement of Act
Section 208 subsection (5)
5: For the purposes of section 66(1)(b)
a: the trade mark was registered under the Trade Marks Act 1953
b: the trade mark is not a defensive trade mark; and
c: the uninterrupted period of suspension of use began within the period of 5 years before this Act came into force.