Trade Marks Amendment Act 2011

1: Title
This Act is the Trade Marks Amendment Act 2011.
2: Commencement
1: Sections 3 4 to 10 12 to 17 19 to 22 24 to 29
2: The rest of this Act comes into force on a date to be appointed by the Governor-General by Order in Council; and 1 or more Orders in Council may be made appointing different dates for different provisions and different purposes. Section 2(2) 7 October 2011 Trade Marks Amendment Act 2011 Commencement Order 2011 Section 2(2) 29 April 2013 Trade Marks Amendment Act 2011 Commencement Order 2013
3: Principal Act amended
This Act amends the Trade Marks Act 2002 2011-09-16 Trade Marks Act 2002 Sections 3, 4 to 10, 12 to 17, 19 to 22, and 24 to 29 come into force on the day after the date on which this Act receives the Royal assent OIC SR 2011/341 2011-10-07 Trade Marks Act 2002 Sections 18 and 23 only OIC SR 2013/48 2013-04-29 Trade Marks Act 2002 Section 11
4: Interpretation
1: Section 5(1) document subpart 2A of Part 4 sections 155B and 155D to 155F
a: any material, whether or not it is signed or otherwise authenticated, that bears symbols (including words and figures), images, or sounds or from which symbols, images, or sounds can be derived, and includes—
i: a label, marking, or other writing that identifies or describes a thing of which it forms a part, or to which it is attached:
ii: a book, map, plan, graph, or drawing:
iii: a photograph, film, or negative; and
b: information electronically recorded or stored, and information derived from that information International Bureau Madrid Protocol Ministry Nice Agreement Nice Classification protected international trade mark (New Zealand) .
2: Paragraph (b) of the definition of applicant section 5(1) ; and
3: The definition of applicant section 5(1)
c: in sections 134G, 134H, and 134K
d: in section 134U .
4: Section 5(1) chief executive chief executive
a: in subpart 3 of Part 4 (border protection measures), has the meaning set out in section 135; and
b: in the rest of this Act, means the chief executive of the Ministry .
5: Section 5(1) Court court
a: means the High Court; and
b: for the purposes of sections 126 to 134, and 134T to 134V .
6: Section 5(1) licensee licensee .
7: Paragraph (d) of the definition of owner section 5(1) a an an
8: Section 5(1) permitted use
9: Section 5(1) series of trade marks series of trade marks
a: resemble each other in their material particulars; and
b: differ only in respect of 1 or more of the following matters:
i: statements of the goods or services for which they are, or are proposed to be, used:
ii: statements of number, price, quality, or names of places:
iii: other matters of a non-distinctive character that do not substantially affect the identity of the trade marks:
iv: colour .
10: The definition of trade mark section 5(1)
b: includes,—
i: except in section 85, a certification trade mark; and
ii: except in section 85, a collective trade mark .
5: Classification of trade marks
Section 31
1: Goods and services must be classified, for the purpose of registration of a trade mark, according to the edition of the Nice Classification in effect at the time of application for registration of the trade mark.
6: New section 53 substituted
Section 53
53: Reissuing certificate of registration
The Commissioner may issue a further certificate of registration if—
a: an application for a further certificate of registration has been made in the prescribed manner; and
b: the prescribed fee, if any, has been paid.
7: Grounds for revoking registration of trade mark
1: Section 66(1)
a: that at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered: .
2: Section 66
1A: For the purposes of subsection (1)(a) continuous period
3: Section 66(3)
a: omitting grounds ground
b: omitting or (b)
8: Onus of proof for revocation of registration of trade mark for non-use
1: Section 67 or (b)
2: Section 67
a: provide proof of the use of the trade mark if the ground in section 66(1)(a) forms the basis for the application; or .
9: Alteration of register
1: Section 78
a: at the request of the owner of the trade mark, allow the owner’s name or address to be altered on the register: .
2: Section 78
c: at the request of the owner,—
i: enter a memorandum that relates to the trade mark, provided that the memorandum does not in any way extend the rights given by the existing registration of the trade mark; or
ii: alter a memorandum, provided that the alteration does not in any way extend the rights given by the existing registration of the trade mark; or
iii: remove a memorandum, provided that the removal does not in any way extend the rights given by the existing registration of the trade mark.
10: Section 81 repealed
Section 81
11: Registration of title to trade mark
Section 82
2: If title to a trade mark is assigned or transmitted after the date the trade mark is registered, either of the following persons may apply to the Commissioner to register the new owner’s title:
a: the person registered as the owner of the trade mark:
b: the person to whom the trade mark has been assigned or transmitted.
3: On proof of the new owner’s title, the Commissioner—
a: must register the new owner 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 any of those documents, to be filed for public record.
4: If title to a trade mark is assigned or transmitted before the actual date of registration, either of the following persons may apply to the Commissioner to change the name of the applicant on the application:
a: the applicant for registration of the trade mark:
b: the person to whom the trade mark has been assigned or transmitted.
5: On proof of the new owner’s title, the Commissioner must—
a: change the name of the applicant on the application; and
b: cause any assignment, transmission, or other document produced in evidence of title, or a copy of any of those documents, to be filed for public record.
12: Heading above section 83 and sections 83, 84, 86, and 87 repealed
1: The heading above section 83 84 86 87
2: All registrations of licensees (to avoid doubt, including registrations made under section 37
13: No infringement for honest practices
1: Section 95(c)(ii) ; or
2: Section 95
d: the trade mark where reasonably necessary to indicate the intended purpose of the goods (in particular as accessories or spare parts) or services.
14: No infringement for certain continuous use of unregistered trade mark
Section 96(1)
b: trade mark B was used in relation to those goods or services in the course of trade by the owner or a predecessor in title of the owner before whichever is the earlier of the following dates:
i: the date of application in New Zealand for the registration of trade mark A; or
ii: the date that the owner, or a predecessor in title, first used trade mark A; and
c: trade mark B has been used continuously in relation to those goods and services in the course of trade by the owner's predecessors in title (if any) and the owner since that date.
15: New section 97 substituted
Section 97
97: No infringement for use in relation to certain identical or similar goods
A trade mark registered 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,—
a: the owner or licensee has applied the trade mark and has not later removed or obliterated it; or
b: the owner or licensee has consented to the use of the trade mark.
16: New section 97A substituted
Section 97A
97A: Exhaustion of rights conferred by registered trade mark
1: A registered trade mark is not infringed by the use of the trade mark (including use for the purpose of advertising) in relation to goods that have been put on the market anywhere in the world under that trade mark under any 1 or more of the following circumstances:
a: by the owner:
b: with the owner’s express or implied consent:
c: by an associated person of the owner.
2: For the purposes of subsection (1)(c) an associated person of the owner
a: they are in the same group of companies; or
b: they are both bodies corporate and they consist of substantially the same members or are directly or indirectly under the control of the same persons; or
c: either of them has effective control of the other's use of the trade mark; or
d: a third person has effective control of the use of the trade mark by each of them.
3: For the purposes of subsection (2)
a: group of companies
b: a person has effective control
17: Application of Criminal Justice Act 1985
1: The heading to section 118 Criminal Justice Act 1985 Sentencing Act 2002
2: Section 118(a) section 22(1)(b) of the Criminal Justice Act 1985 section 32(1)(a) and (c) of the Sentencing Act 2002
18: New subpart 2A of Part 4 inserted
The following subpart is inserted after section 134
2A: Enforcement officers
Appointment and functions of enforcement officers
134A: Chief executive may appoint enforcement officers
The chief executive may appoint enforcement officers, on a permanent or temporary basis, to perform the functions set out in section 134C
134B: Authority to act as enforcement officer
1: The chief executive must issue a warrant of appointment to every person appointed as an enforcement officer.
2: A warrant of appointment must—
a: be in the prescribed form; and
b: bear the photograph and signature of the holder; and
c: contain a statement of the power conferred by section 134D
d: contain any other prescribed particulars.
3: A warrant of appointment is, in the absence of evidence to the contrary, sufficient proof that the holder of the warrant may exercise the powers conferred on an enforcement officer.
4: A person who ceases to be an enforcement officer must return the person’s warrant of appointment.
5: A person who fails to comply with subsection (4)
134C: Functions of enforcement officer
An enforcement officer must, to the extent that is reasonably practicable, promote compliance with this Act by carrying out the following functions:
a: gathering information relating to offences under this Act:
b: investigating offences under this Act:
c: reporting to the chief executive on any matters relating to the enforcement officer’s functions. Enforcement officer's power of entry and examination without warrant
134D: Enforcement officer’s power of entry and examination without warrant
1: For the purpose of carrying out his or her functions, an enforcement officer may enter and examine any place ( place A
a: place A is in a public place and the entry is made when place A is open to the public; or
b: place A is a place of business and the entry is made—
i: when it is open for carrying on business; and
ii: only to those parts of it that are open to the public; or
c: the occupier of place A consents to the entry and examination after the enforcement officer has informed the occupier—
i: of the purpose of the entry and examination; and
ii: that the occupier may refuse to give consent to the entry and examination; and
iii: that the occupier may revoke his or her consent at any time; and
iv: that any thing seized during the examination may be used in evidence in proceedings.
2: In subsection (1) place A
a: includes (without limitation)—
i: a structure or tent, whether fully or partly erected; and
ii: a stand or stall; and
iii: a vehicle; and
iv: a caravan, trailer, or other conveyance; but
b: does not include a private dwellinghouse public place
3: For the purposes of this section, any person who appears to be under 14 years of age may not be treated as the occupier.
134E: What enforcement officer and person assisting may do when exercising power of entry and examination without warrant
1: The power of entry and examination conferred by section 134D
a: examine the place and all things, including any document:
b: seize any thing that he or she has reasonable grounds to believe is evidence of, or of significant relevance to the investigation of, an offence under this Act:
c: bring and use in or on the place equipment for the purposes of carrying out the examination:
d: take photographs or sound or video recordings of the place, and of any thing found in that place, if the enforcement officer has reasonable grounds to believe that the photographs or sound or video recordings may be relevant in any proceedings (including future proceedings) related to the entry and examination:
e: take any person to the place to assist him or her with the examination.
2: A person who assists an enforcement officer exercising the power of entry and examination may, under the direction of the enforcement officer,—
a: exercise any of the powers described in subsection (1)(a), (c), and (d)
b: seize any thing that the enforcement officer determines may lawfully be seized.
3: If an enforcement officer enters and examines a place under section 134D(1)(c)
4: Subsection (3) subsection (5)
5: The enforcement officer may, before leaving the place, seize any thing already identified by him or her before the revocation of consent as a thing that he or she has reasonable grounds to believe is evidence of, or of significant relevance to the investigation of, an offence under this Act.
6: If a member of the police assists an enforcement officer, nothing in this section prevents that member of the police from exercising any power ordinarily exercisable by him or her.
7: Sections 134P to 134S Entry and search under search warrant
134F: Enforcement officer or member of police may apply for search warrant
1: An enforcement officer or a member of the police may apply for a search warrant to search a place or thing.
2: Any District Court Judge, Justice of the Peace, Community Magistrate, or any Registrar of a District Court (not being a member of the police) (the issuing officer
a: an offence under this Act has been, or is being, committed at the place or involving the thing; or
b: there is at, in, on, over, or under the place or thing, any thing that is—
i: evidence of an offence under this Act; or
ii: intended to be used for the purpose of committing an offence under this Act.
3: Sections 134G to 134S
134G: Application for search warrant
1: An application for a search warrant must contain, in reasonable detail, the following particulars:
a: the name of the applicant:
b: the provision of this Act authorising the making of the application:
c: the grounds on which the application is made:
d: the address or other description of the place or thing proposed to be searched:
e: a description of the item or items believed to be at, in, on, over, or under the place or thing that are sought by the applicant:
f: the period for which the warrant is sought:
g: if the applicant wants to be able to execute the warrant on more than 1 occasion, the grounds on which execution on more than 1 occasion is believed to be necessary.
2: The issuing officer may require the applicant to supply further information concerning the grounds on which the search warrant is sought.
3: The applicant must disclose in the application—
a: details of any other application for a search warrant that the applicant knows to have been made within the previous 3 months in respect of the place or thing proposed to be searched:
b: the result of that application or those applications.
4: The applicant must, before making an application for a search warrant, make reasonable inquiries within the agency in which the applicant is employed or engaged for the purpose of complying with subsection (3)
5: The issuing officer may authorise the search warrant to be executed on more than 1 occasion during the period in which the warrant is in force if he or she is satisfied that this is required for the purposes for which the warrant is being issued.
134H: Mode of application for search warrant
1: Unless subsection (3)
a: must be in writing; and
b: must be in the prescribed form (if any); and
c: may be transmitted to the issuing officer electronically.
2: The applicant must appear in person before the issuing officer, unless subsection (3)
3: An issuing officer may allow an application for a search warrant to be made verbally (for example, by telephone call) and excuse the applicant from making a personal appearance if the issuing officer is satisfied that—
a: the delay that would be caused by requiring an applicant to appear in person would compromise the effectiveness of the search; and
b: the question of whether the warrant should be issued can properly be determined on the basis of a verbal communication (including the information described in paragraph (c)
c: the information required by section 134G(1) to (3)
4: An issuing officer who allows an application for a search warrant to be made verbally must record the grounds for the application as soon as practicable.
134I: Form and content of search warrant
1: Every search warrant issued must be in the prescribed form.
2: Every search warrant issued must be directed generally to every enforcement officer and every member of the police.
3: A search warrant—
a: may be executed by any of the persons to whom it is directed:
b: may be subject to any conditions specified in the warrant that the issuing officer considers reasonable:
c: may be executed only once, unless execution on more than 1 occasion is authorised.
4: Every search warrant must contain, in reasonable detail, the following particulars:
a: the name of the issuing officer and the date of issue:
b: the provision of this Act authorising the issue of the warrant:
c: that the person executing the warrant may use any assistance that is reasonable in the circumstances:
d: that the person executing the warrant may use any force that is reasonable in the circumstances to enter or break open or access any place being searched, or any area within that place, or any thing being searched or thing found:
e: the address or description of the place or thing that may be searched:
f: a description of what may be seized:
g: the period during which the warrant may be executed, being—
i: a period specified by the issuing officer not exceeding 14 days from the date of issue; or
ii: if the issuing officer is satisfied that a period of longer than 14 days is necessary for execution, a period specified by the issuing officer not exceeding 30 days from the date of issue:
h: any conditions specified by the issuing officer under subsection (3)(b)
i: if the warrant may be executed on more than 1 occasion, the number of times that the warrant may be executed.
134J: Transmission of search warrant
If it is not possible for the person charged with executing the warrant to have it in his or her possession at the time of execution, 1 of the following documents (which is deemed for all purposes to constitute the warrant) may be executed:
a: a fax or other electronic copy of a warrant issued by the issuing officer:
b: a copy of the text of a warrant, made at the direction of the issuing officer, and endorsed to that effect by the person who made the copy.
134K: Retention of documents
1: A copy of every written application for a search warrant or, in the case of a verbal application, the written record of the application made by the issuing officer, must be retained at the District Court at which, or the District Court that is closest to the place at which, the application was made, until,—
a: in a case where a search warrant is issued, the completion of any proceedings in respect of which the search warrant may be in issue; and
b: in any other case, the expiry of 2 years after the documents were first retained by the District Court.
2: An applicant to whom a search warrant is issued must retain the warrant, a copy of the application (if made in written form), and all documents tendered by the applicant in support of the application until,—
a: in the case of a warrant that is executed, the completion of any proceedings in respect of which the validity of the warrant may be in issue; and
b: in any other case, the destruction or transfer of the warrant and other documents is required by the Public Records Act 2005 or any other enactment or rule of law.
134L: When search warrant is executed
A search warrant is executed when the person executing the warrant—
a: has seized all the items specified in the warrant; or
b: leaves the place or thing being searched and does not return within 4 hours.
134M: Powers of entry and search under warrant
1: Every search warrant authorises the person executing it to do any of the following:
a: to enter and search the place or thing that the person is authorised to enter and search, and any item or items found in that place, at any time that is reasonable in the circumstances:
b: to request any person to assist with the entry and search (including, without limitation, a member of a hapū or an iwi if the place to be entered is of cultural or spiritual significance to that hapū or iwi):
c: to use any force that is reasonable for the purposes of the entry and search:
d: to seize any thing authorised to be seized:
e: to bring and use in or on the place or thing searched any equipment, to use any equipment found on the place or thing, and to extract any electricity from the place or thing to operate the equipment that it is reasonable to use in the circumstances, for the purposes of carrying out the entry and search:
f: to copy any document, or part of a document, that may lawfully be seized:
g: to take photographs or sound or video recordings of the place or thing searched, and of any thing found in that place, if the person exercising the power has reasonable grounds to believe that the photographs or sound or video recordings may be relevant in any proceedings related to the entry and search.
2: The person executing the warrant may, in a manner and for the duration that is reasonable for the purposes of carrying out the search,—
a: secure the place or thing searched, any area within that place or thing, or any thing found within that place or thing; and
b: exclude any person from the place or thing searched, or from any area within the place or thing, or give any other reasonable direction to such a person, if the person carrying out the search has reasonable grounds to believe that the person will obstruct or hinder the exercise of the power.
3: The powers conferred by this section are subject to any conditions imposed under section 134I(3)(b).
4: Section 198B of the Summary Proceedings Act 1957 applies with all necessary modifications as if for each reference to a constable there were substituted a reference to the person authorised to execute the search warrant.
134N: Powers of persons called to assist
1: Every person called on to assist a person executing a warrant is subject to the control of the person executing the warrant.
2: Every person called on to assist a person executing a warrant may do any of the following:
a: enter the place or thing to be searched:
b: while in the company and under the direction of the person executing the warrant, use reasonable force in respect of any property for the purposes of carrying out the entry and search:
c: search areas within the place or thing that the person executing the warrant determines may lawfully be searched:
d: seize any thing that the person executing the warrant determines may lawfully be seized:
e: take photographs and sound and video recordings of the place or thing and things found in the place or thing if the person executing the warrant determines that those things may lawfully be done:
f: bring in or on to the place or thing and use any equipment, make use of any equipment found on the place or thing, or extract electricity from the place or thing for the purposes of operating the equipment that the person executing the warrant determines may lawfully be used:
g: copy any document, or part of a document, that the person executing the warrant determines may lawfully be copied.
3: If a member of the police is assisting another person executing the warrant, that member of the police may exercise any power ordinarily exercisable by him or her.
4: The person executing the warrant must—
a: accompany any assistant on the first occasion when the assistant enters the place or thing to be searched; and
b: provide such other supervision of any assistant as is reasonable in the circumstances. General provisions that apply to powers of entry and search, and entry and examination
134O: Application of sections 134P to 134S
1: Sections 134P to 134S
2: Sections 134P(1) and 134Q to 134S section 134D
3: In sections 134P to 134S
a: power of entry and search
b: power of entry and examination section 134D
134P: Powers and duties of person exercising power of entry and search or power of entry and examination
1: A person exercising a power of entry and search or a power of entry and examination must,—
a: before initial entry into or onto the place or thing to be searched or examined,—
i: announce his or her intention to enter and search or to enter and examine the place or thing under a statutory power; and
ii: identify himself or herself; and
b: before or on initial entry into or onto the place or thing to be searched or examined,—
i: give the occupier of the place or thing a copy of the search warrant or, in the case of an examination, a copy of section 134D authority
ii: produce to the occupier of the place or thing evidence of his or her identity (which may include details of a unique identifier instead of a name).
2: The person exercising a power of entry and search is not required to comply with subsection (1)
a: no person is lawfully present in or on the place or thing to be searched; or
b: compliance with subsection (1)
i: endanger the safety of any person; or
ii: prejudice the successful exercise of the power of entry and search; or
iii: prejudice ongoing investigations under this Act.
3: The person exercising a power of entry and search may use reasonable force in order to effect entry into or onto the place or thing if—
a: subsection (2)
b: following a request, the person present refuses entry or does not allow entry within a reasonable time.
4: If the occupier is not present at any time during the exercise of a power of entry and search, the person carrying out the search must,—
a: on completion of the search, leave a copy of the authority referred to in subsection (1)(b)(i) subsection (5)
b: if this is not reasonably practicable, provide the copy of the authority referred to in subsection (1)(b)(i) subsection (5)
5: The notice required by subsection (4)
a: the date and time of the commencement and completion of the search:
b: the name or unique identifier of the person who had overall responsibility for that search:
c: the address of the office to which inquiries should be made:
d: if nothing is seized, the fact that nothing was seized:
e: if any thing was seized, the fact that seizure occurred and, if an inventory is not provided at the same time under section 134Q
6: For the purposes of this section and section 134Q
7: Subsections (4) and (5) sections 134R and 134S
134Q: Inventory of things seized
1: A person who exercises a power of entry and search or a power of entry and examination must, at the time he or she seizes any thing, or as soon as practicable after the seizure of any thing, and in any case not later than 7 days after that seizure, provide to the occupier, and to every other person whom the person who carried out the search or examination has reason to believe is the owner of the thing that was seized,—
a: written notice specifying what was seized; and
b: a copy of the authority referred to in section 134P(1)(b)(i)
2: A written notice referred to in subsection (1)(a)
a: must contain information about the extent to which a person from whom a thing was seized or the owner of the thing has a right—
i: to have access to the thing; and
ii: to have access to any document relating to the application for a search warrant or the exercise of the power of entry and examination that led to the seizure; and
b: must contain information about the right to bring a claim that any privileged or confidential information has been seized; but
c: need not be provided to the occupier if the person who carries out the search or examination is satisfied that none of the things seized are owned by the occupier.
3: If the occupier is not present at the time of seizure, the written notice referred to in subsection (1)(a) section 134P(1)(b)(i)
4: A person who exercises a power of entry and search or a power of entry and examination must make reasonable inquiries for the purposes of complying with subsections (1) and (2)
5: Subsection (1) subsections (2) and (3)
6: This section is subject to sections 134R and 134S
134R: Compliance with certain provisions may be deferred in certain circumstances
1: A person exercising a power of entry and search or a power of entry and examination may apply to a District Court Judge for an order postponing the obligation to comply with section 134P(4) or (5) or 134Q
a: endanger the safety of any person; or
b: prejudice ongoing investigations under this Act or exercises of the power of entry and search or the power of entry and examination on subsequent occasions.
2: An application may be made under subsection (1)
a: in the case of a search warrant, at the time of the initial application or until the expiry of 7 days after the warrant is finally executed; and
b: in the case of the power of entry and examination, until the expiry of 7 days after the power of entry and examination is exercised.
3: On an application under subsection (1) section 134P(4) or (5) or 134Q subsection (1)
134S: Further extension to, or dispensation from, obligation to comply with certain provisions
1: A person who has obtained an order under section 134R(3) section 134P(4) or (5) or 134Q section 134R(1)
2: An application for a further postponement may only be made on 1 occasion.
3: On an application under subsection (1) section 134P(4) or (5) or 134Q section 134R(1)
4: A District Court Judge may not grant, under subsection (3) Provisions relating to things seized
134T: Period things seized may be retained
1: A thing seized under this Act may be retained by the Commissioner of Police or by the chief executive while it is required for the purposes of investigating or prosecuting an offence under this Act.
2: Subsection (1)
a: any order of the court under section 134U
b: section 134W
3: If a thing seized is no longer required for the purposes of investigating or prosecuting an offence under this Act, the Commissioner of Police or the chief executive must return it to the person he or she believes is entitled to it.
4: The Commissioner of Police or chief executive may apply to the court for an order for directions as to the disposal of the thing if—
a: the person who is entitled to it cannot be found; or
b: the Commissioner of Police or chief executive is in doubt about who is entitled to it.
5: On an application under subsection (4)
134U: Application for order to return things seized
1: A person who claims to be entitled to a thing seized may apply to the court for an order that the thing be delivered to him or her.
2: On an application under subsection (1)
a: that the applicant is the person entitled to it; and
b: that it would be contrary to the interests of justice for the thing to be retained, having regard to—
i: the gravity of the alleged offence in respect of which the thing is being retained; and
ii: any loss or damage to the applicant caused, or likely to be caused, by retention of the thing; and
iii: the likely evidential value of the thing, having regard to any other evidence held by the Commissioner of Police or the chief executive, as the case may be; and
iv: whether the evidential value of the thing can be adequately preserved by means other than its retention.
134V: Disposal of things seized
1: In any proceedings for an offence relating to a thing seized, the court may, either at the trial or on an application, order—
a: that the thing be delivered to the person who appears to the court to be entitled to it; or
b: that the thing be destroyed or otherwise disposed of in the manner that the court thinks appropriate; or
c: if a person is convicted of an offence to which the thing relates,—
i: that the thing be forfeited to the trade mark owner; or
ii: that the thing be destroyed or otherwise disposed of as the court directs at the expense of the convicted person.
2: In considering what order, if any, should be made under subsection (1)(c)(ii)
3: If the court makes an order under subsection (1)(c)
4: If no order for delivery, forfeiture, destruction, or other disposal is made in respect of a thing seized and retained for the purpose of proceedings, it must, on completion of the proceedings, be returned by the Commissioner of Police or the chief executive to the person entitled to it.
5: The Commissioner of Police or chief executive may apply to the court for an order for directions as to the disposal of the thing if—
a: the person who is entitled to it cannot be found; or
b: the Commissioner of Police or chief executive is in doubt about who is entitled to it.
6: On an application under subsection (5)
134W: Disposal of perishable things
If, in the opinion of the Commissioner of Police or chief executive, a thing seized may rot, spoil, deteriorate, or otherwise perish, he or she may dispose of it in the way and at the price (if any) or the cost he or she may determine. Other powers of enforcement officers
134X: Enforcement officer may apply for production order
1: If an enforcement officer believes on reasonable grounds that a person has in his or her possession, custody, or control, 1 or more documents that are evidence of, or may be of significant relevance to the investigation of, an offence against any of sections 120 to 124, the enforcement officer may apply to a District Court Judge for an order requiring the person to produce the documents for inspection by an enforcement officer.
2: An application by an enforcement officer for an order under subsection (1)
a: be in writing; and
b: be in the prescribed form (if any); and
c: be made on oath; and
d: set out, in reasonable detail, the grounds for the application; and
e: provide details of the documents in respect of which the order is sought.
134Y: Judge may order documents to be produced
1: If an application is made under section 134X
2: An order under subsection (1)
a: must be in the prescribed form (if any); and
b: must specify—
i: when the documents are to be produced for inspection; and
ii: the place where the documents are to be produced for inspection; and
iii: the enforcement officer to whom the documents are to be produced for inspection; and
c: may be subject to any further terms and conditions the District Court Judge thinks fit.
134Z: Powers of enforcement officer to whom documents produced
An enforcement officer to whom any document is produced for inspection under an order under section 134Y
a: inspect the document:
b: take extracts from the document:
c: make copies of the document.
134ZA: Offence of failing to comply with order to produce documents
1: No person may, without reasonable excuse, fail to comply with an order under section 134Y
2: Every person who breaches subsection (1)
a: in the case of an individual, to imprisonment for a term not exceeding 6 months or a fine not exceeding $10,000; and
b: in the case of a body corporate, to a fine not exceeding $50,000. Powers of police
134ZB: Powers of police
Every member of the police has all, and may exercise any, of the powers of an enforcement officer under this subpart Miscellaneous
134ZC: Privilege against self-incrimination
1: An order under section 134Y
2: Any assertion of a privilege against self-incrimination must be based on section 60 of the Evidence Act 2006.
3: If any individual refuses to produce a document on the ground that it is a privileged communication under section 60 of the Evidence Act 2006, an enforcement officer or a member of the police may apply to a District Court Judge for an order determining whether the claim of privilege is valid; and, in respect of any such application, the individual must offer sufficient evidence to enable the District Court Judge to assess whether self-incrimination would be reasonably likely if the individual produced the document.
4: To avoid doubt, nothing in this section affects the application of section 65 of the Evidence Act 2006 (which relates to waiver of privilege) in respect of the privilege against self-incrimination that a person may have under section 60 of that Act.
5: Section 63 of the Evidence Act 2006 does not apply to an order made under section 134Y
134ZD: Other privileges
1: If, in a criminal proceeding, a person could assert a privilege under section 54 or 56 of the Evidence Act 2006 in respect of a communication or information, that person has the same privilege for the purposes of an examination under section 134D section 134F section 134Y
2: Subsection (3)
3: The application, by subsection (1)
a: the issue or execution of a search warrant under section 134F
b: the making of an order under section 134Y
c: the admissibility, in a criminal proceeding under this Act, of any evidence that relates to the contents of a document to which this subsection applies obtained as a result of a search warrant issued under section 134F section 134Y
4: A person who has a privilege under this section has the right—
a: to prevent the examination under section 134D section 134F section 134Y
b: to require the return of any such communication or information if it is seized by a person exercising the power of examination under section 134D section 134F
5: If a person asserts a claim to privilege under this section in respect of any communication or information, an enforcement officer or a member of the police may apply to a District Court Judge for an order determining whether or not the claim to privilege is valid; and, for the purpose of determining any such application, the District Court Judge may require the communication or information to be produced to him or her.
6: A District Court Judge may, on the application of an enforcement officer or a member of the police, disallow a privilege claimed under this section if the Judge is satisfied that the claim to privilege would, under section 67(1) of the Evidence Act 2006, be disallowed in a proceeding.
7: Section 65 of the Evidence Act 2006 (which relates to waiver of privilege) applies in respect of any privilege under this section.
134ZE: Disclosure of information
1: The chief executive (or any employee of the Ministry authorised in that behalf), the chief executive of the New Zealand Customs Service (or any employee of the New Zealand Customs Service authorised in that behalf), and the Commissioner of Police (or any member of the police authorised in that behalf) may disclose information to each other, on request, for the purpose of investigating and prosecuting offences under this Act.
2: Information obtained under subsection (1)
a: to the persons authorised under that subsection; or
b: for the purpose of any proceedings that have been commenced or that are reasonably in contemplation and that are connected with a matter in relation to which those persons perform their duties.
3: No obligation as to secrecy or other restriction on the disclosure of information imposed by any enactment or otherwise prevents a disclosure under this section.
134ZF: No liability if functions performed or powers exercised in good faith
1: This section applies to—
a: an enforcement officer:
b: a person who assists an enforcement officer or a member of the police under this subpart
c: a member of the police who exercises any power of an enforcement officer under this subpart
2: No person to whom this section applies is liable for any act done or omitted to be done by the person in the performance or intended performance of his or her functions or the exercise or intended exercise of his or her powers under this Act if the person acted—
a: in good faith; and
b: in a reasonable manner; and
c: in the reasonably held belief that the prerequisites for the performance of any function or the exercise of any power had been satisfied.
19: Interpretation
Section 135 accepted notice Customs .
20: New section 136 substituted
Section 136
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 that are put on the market anywhere in the world under any 1 or more of the circumstances referred to in section 97A(1)(a) to (c)
21: New sections 139A to 139C inserted
The following sections are inserted after section 139
139A: Chief executive may suspend accepted notice
1: The chief executive may suspend an accepted notice if the chief executive is satisfied that—
a: the information held in respect of the accepted notice is not correct or is no longer current; or
b: there has been a failure to comply with a requirement concerning the giving of security or indemnity or both; or
c: there has been a failure to comply with an obligation under an indemnity given for an amount in respect of the accepted notice.
2: Before suspending an accepted notice, the chief executive must—
a: give written advice of the chief executive’s intention to suspend the accepted notice to—
i: the person who gave the notice under section 137; or
ii: if the chief executive has received notification of an assignment or transmission of the trade mark to which the notice relates, the person notified as the current owner of the trade mark; and
b: include in or with the advice a statement of the chief executive’s reasons; and
c: give the person to whom the advice is given not less than 20 working days to respond; and
d: consider any response made by that person to the chief executive within the time allowed.
3: The written advice under subsection (2)
a: by delivering it to that person; or
b: by posting it to the most recent address for that person that has been notified to the chief executive.
139B: Notice of suspension
1: If the chief executive decides to suspend an accepted notice, the chief executive must give written notice of the suspension to the person referred to in section 139A(2)(a)
2: The notice of suspension may be given—
a: by delivering it to that person; or
b: by posting it to the most recent address for that person that has been notified to the chief executive.
139C: Chief executive may reinstate accepted notice
The chief executive may reinstate an accepted notice suspended under section 139A
22: Duration of accepted notice
Section 140
140: Duration of accepted notice
1: An accepted notice 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; or
c: registration of the trade mark to which the notice relates has been cancelled, revoked, declared invalid, or has expired.
2: However, an accepted notice is not in force during the period of any suspension under section 139A
23: New headings and sections 155A to 155K inserted
The following headings and sections are inserted after section 155 Enforcement powers of Customs officers
155A: Customs officer may seize goods in control of Customs
1: A Customs officer may seize any imported goods that are in the control of the Customs if the officer has reasonable cause to believe that they are evidence of, or of significant relevance to the investigation of, an offence under section 124(a).
2: The provisions of sections 134T to 134W
155B: Chief executive may require person to produce documents concerning goods in control of Customs
1: If a Customs officer believes on reasonable grounds that goods in the control of the Customs have been imported in breach of this Act, the chief executive may, by notice in writing, require any person whom the Customs officer believes to have imported the goods, or any person whom the Customs officer believes to have acted as agent of that person, to produce to a Customs officer for inspection any specified document or class of documents in the person's possession or control that the Customs officer considers relevant to determining whether the goods should be seized under section 155A
2: A notice under this section requiring a person to produce any document must—
a: be in the prescribed form; and
b: specify the Customs officer to whom the person must produce the document; and
c: specify a reasonable time and place at which the document must be produced; and
d: be served on the person by—
i: delivering it to him or her in person; or
ii: posting it to the person's address or delivering it to a box at a document exchange that the person is using at the time; or
iii: sending it by fax machine to a telephone number used by the person for the transmission of documents by fax; or
iv: if the person is a registered user of a Customs computerised entry processing system, by transmitting it by electronic means to the person in accordance with the normal procedure of operation of the relevant Customs computerised entry processing system in relation to that person.
3: A Customs officer to whom a document is produced for inspection may do 1 or more of the following:
a: inspect the document:
b: take extracts from the document:
c: make copies of the document.
155C: Chief executive may require person to appear and answer questions concerning goods in control of Customs
1: If a Customs officer believes on reasonable grounds that goods in the control of the Customs have been imported in breach of this Act, the chief executive may, by notice in writing, require any person whom the Customs officer believes to have imported the goods, or any person whom the Customs officer believes to have acted as agent of that person, to appear before a Customs officer and to answer questions that the Customs officer considers relevant to determining whether the goods should be seized under section 155A
2: A notice under this section requiring a person to appear before a Customs officer and to answer questions must—
a: be in the prescribed form; and
b: specify the Customs officer before whom the person must appear; and
c: specify a reasonable time and place at which the person must appear; and
d: be served on the person by—
i: delivering it to him or her in person; or
ii: posting it to the person's address or delivering it to a box at a document exchange that the person is using at the time; or
iii: sending it by fax machine to a telephone number used by the person for the transmission of documents by fax; or
iv: if the person is a registered user of a Customs computerised entry processing system, by transmitting it by electronic means to the person in accordance with the normal procedure of operation of the relevant Customs computerised entry processing system in relation to that person.
155D: Customs officer may apply for production order
1: If a Customs officer believes on reasonable grounds that a person has in his or her possession, custody, or control, 1 or more documents that are evidence of, or may be of significant relevance to the investigation of, an offence against any of sections 120 to 124 in respect of imported goods, the Customs officer may apply to a District Court Judge for an order requiring the person to produce the documents for inspection by a Customs officer.
2: An application by a Customs officer for an order under subsection (1)
a: be in writing; and
b: be in the prescribed form (if any); and
c: be made on oath; and
d: set out, in reasonable detail, the grounds for the application; and
e: provide details of the documents in respect of which the order is sought.
155E: Judge may order documents to be produced
1: If an application is made under section 155D
2: An order under subsection (1)
a: must be in the prescribed form (if any); and
b: must specify—
i: when the documents are to be produced for inspection; and
ii: the place where the documents are to be produced for inspection; and
iii: the Customs officer to whom the documents are to be produced for inspection; and
c: may be subject to any further terms and conditions the District Court Judge thinks fit.
155F: Powers of Customs officer to whom documents produced
A Customs officer to whom any document is produced for inspection under an order under section 155E
a: inspect the document:
b: take extracts from the document:
c: make copies of the document.
155G: Issue of search warrants to Customs officers
1: A Customs officer may apply for a search warrant to search a place or thing.
2: Any District Court Judge, Justice of the Peace, Community Magistrate, or Registrar of a District Court (the issuing officer
3: Sections 134G to 134S
4: Sections 134T to 134W
155H: Privilege against self-incrimination
1: A notice under section 155B or 155C section 155E
2: Any assertion of a privilege against self-incrimination must be based on section 60 of the Evidence Act 2006.
3: If any individual refuses to produce any information or document or to answer any question on the ground that it is a privileged communication under section 60 of the Evidence Act 2006, a Customs officer or a member of the police may apply to a District Court Judge for an order determining whether the claim of privilege is valid; and, in respect of any such application, the individual must offer sufficient evidence to enable the District Court Judge to assess whether self-incrimination would be reasonably likely if the individual produced the information or the document or answered the question.
4: To avoid doubt, nothing in this section affects the application of section 65 of the Evidence Act 2006 (which relates to waiver of privilege) in respect of the privilege against self-incrimination that a person may have under section 60 of that Act.
5: Section 63 of the Evidence Act 2006 does not apply to an order made under section 155E
155I: Other privileges
1: If, in a criminal proceeding, a person could assert a privilege under section 54 or 56 of the Evidence Act 2006 in respect of a communication or information, that person has the same privilege for the purposes of a notice issued under section 155B or 155C section 155E section 155G
2: Subsection (3)
3: The application, by subsection (1)
a: the issue of a notice under section 155B
b: the making of an order under section 155E
c: the issue of a search warrant under section 155G
d: the admissibility, in a criminal proceeding under this Act, of any evidence that relates to the contents of a document to which this subsection applies obtained under a notice issued under section 155B section 155E section 155G
4: A person who has a privilege under this section has the right—
a: to refuse to disclose a communication or information to which the privilege would apply if it were sought to be disclosed in a criminal proceeding; and
b: to prevent the search of any such communication or information; and
c: to require the return of any such communication or information if it is seized by a person exercising a power of search pending determination of the claim to privilege.
5: If a person asserts a claim to privilege under this section in respect of any communication or information, a Customs officer or a member of the police may apply to a District Court Judge for an order determining whether the claim to privilege is valid; and, for the purpose of determining any such application, the District Court Judge may require the communication or information to be produced to him or her.
6: A District Court Judge may, on the application of a Customs officer or a member of the police, disallow a privilege claimed under this section if the Judge is satisfied that the claim to privilege would, under section 67(1) of the Evidence Act 2006, be disallowed in a proceeding.
7: Section 65 of the Evidence Act 2006 (which relates to waiver of privilege) applies in respect of any privilege under this section.
155J: Offences
1: No person may, without reasonable excuse, refuse or fail to comply with a notice given under section 155B
2: No person who is required by a notice given under section 155C
a: refuse or fail to appear before the Customs officer in accordance with the notice; or
b: refuse to answer any question.
3: No person may, without reasonable excuse, refuse or fail to comply with an order made under section 155E
4: Every person who breaches any of subsections (1) to (3)
a: in the case of an individual, to imprisonment for a term not exceeding 6 months or to a fine not exceeding $10,000; and
b: in the case of a body corporate, to a fine not exceeding $50,000. Immunity
155K: No liability if powers exercised in good faith
1: This section applies to—
a: a Customs officer; and
b: a person who assists a Customs officer under this subpart
2: No person to whom this section applies is liable for any act done or omitted to be done by the person in the exercise or intended exercise of his or her powers under this Act if the person acted—
a: in good faith; and
b: in a reasonable manner; and
c: in the reasonably held belief that the prerequisites for the exercise of any power had been satisfied.
24: New sections 175 to 175C
Section 175
175: Commissioner and Assistant Commissioners of Trade Marks
1: The chief executive of the Ministry must appoint, under the State Sector Act 1988,—
a: the Commissioner of Trade Marks; and
b: as many Assistant Commissioners of Trade Marks as may be necessary for the purposes of this Act.
2: Those persons are employees of the Ministry, and those appointments may be made separately or in conjunction with any other office in the Ministry.
175A: Functions of Commissioner
The functions of the Commissioner are, in accordance with this Act and the regulations, to—
a: examine applications for the registration of trade marks, consider applications for the alteration, renewal, assignment, revocation, declaration of invalidity, and cancellation of registered trade marks and make other decisions relating to the examination and registration of trade marks; and
b: provide preliminary advice and search advice to persons who propose to apply for the registration of trade marks; and
c: appoint and alter the advisory committee under section 177; and
d: provide administrative support to the advisory committee; and
e: maintain the register of trade marks and carry out other duties and responsibilities relating to the register of trade marks; and
f: perform or exercise other functions, duties, and powers conferred on him or her by this Act and the regulations.
175B: Powers of Assistant Commissioners
1: An Assistant Commissioner of Trade Marks has the functions, duties, and powers of the Commissioner under this Act, other than the power to delegate under section 175C
2: The fact that an Assistant Commissioner performs or exercises those functions, duties, and powers is conclusive evidence of the authority to do so.
175C: Power of Commissioner to delegate
1: The Commissioner may delegate to any person, either generally or particularly, any of the Commissioner's functions, duties, and powers (except this power of delegation).
2: A delegation—
a: must be in writing; and
b: may be subject to any restrictions and conditions that the Commissioner thinks fit; and
c: is revocable at any time, in writing; and
d: does not prevent the performance or exercise of a function, duty, or power by the Commissioner.
3: A person to whom any of the functions, duties, and powers are delegated may perform and exercise them in the same manner and with the same effect as if they had been conferred directly by this Act and not by delegation.
4: A person who appears to act under a delegation is presumed to be acting in accordance with its terms in the absence of evidence to the contrary.
5: Any reference in this Act or the regulations to the Commissioner includes a reference to the delegate in respect of anything delegated to that person.
25: Contents of register
Section 182
d: memoranda referred to in section 78(c) .
26: Regulations
1: Section 199(b)
ia: providing for the division of a registration of a trade mark into several registrations: .
2: Section 199
3: Section 199(e)
i: requiring a person to give security or an indemnity or both, subject to any conditions determined by the chief executive of the New Zealand Customs Service, for any costs incurred by the New Zealand Customs Service in relation to any 1 or more of the detention of goods, the disposal of goods, or the recovery of sums owed: .
4: Section 199
j: prescribing forms for the purposes of this Act; and those regulations may require—
i: the inclusion in, or attachment to, forms of specified information or documents:
ii: forms to be signed by specified persons: .
27: New section 199A inserted
The following section is inserted after section 199
199A: Regulations: Madrid Protocol
The Governor-General may, by Order in Council, make regulations for the purpose of giving effect in New Zealand to the Madrid Protocol, including providing for any of the following:
a: making applications for international registration by way of the Patent Office as office of origin:
b: procedures to be followed where the basic New Zealand application for registration ceases to be in force:
c: procedures to be followed where the Patent Office receives from the International Bureau, or any body specified in the regulations, a request for extension of protection to New Zealand:
d: the effects of a successful request for extension of protection to New Zealand:
e: transforming an application for an international registration, or an international registration, into a national application for registration:
f: communicating information to the International Bureau:
g: requiring fees to be paid in respect of applications for international registrations, extensions of protection, and renewals, and prescribing the amounts of those fees:
h: the application of the following provisions to a protected international trade mark (New Zealand):
i: section 105 (unjustified proceedings):
ii: subpart 2 of Part 4 (criminal proceedings):
iii: subpart 3 of Part 4 (border protection measures). Consequential amendments
28: Amendments to Trade Marks Regulations 2003
1: This section amends the Trade Marks Regulations 2003
2: Regulation 3 Nice Classification Nice Classification .
3: Regulation 44
c: the class or classes of the edition of the Nice Classification in effect at the time of the application in which registration is sought; and .
4: Regulation 135
135: Request for alteration of owner's name or address
A request under section 78(a) of the Act for the alteration of the name or address of the owner of a trade mark must—
a: be in writing; and
b: be signed by the owner; and
c: contain the following information:
i: the trade mark's registration number:
ii: a representation or description of the trade mark:
iii: the owner's name:
iv: if the owner has an agent, the agent's name:
v: the new name or address to be entered on the register.
5: The heading to regulation 137 , alteration, or removal Request for entry
6: Regulation 137 , alteration, or removal A request under section 78(c) of the Act for the entry
7: Regulation 137(c)
v: the memorandum to be entered, the alteration to be made to a memorandum, or the memorandum to be removed (as the case may be).
8: Regulations 143 144 Part 17
9: Regulation 160(1) section 152 section 154 2011-09-16 Trade Marks Regulations 2003
29: Amendments to Trans-Tasman Mutual Recognition Act 1997
1: This section amends the Trans-Tasman Mutual Recognition Act 1997
2: Schedule 1 Trade Marks Act 2002 . 2011-09-16 Trans-Tasman Mutual Recognition Act 1997