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.
Section 2(1): Trade Marks Act 2002 (except sections 177–180, 199, and 200) brought into force, on 20 August 2003, by the Trade Marks Act 2002 Commencement Order 2003 (SR 2003/188).
more clearly define the scope of rights protected by registered trade marks; and
(b)
simplify procedures for registering a trade mark in order to reduce costs to applicants and to reduce business compliance costs generally; and
(c)
address Māori concerns relating to the registration of trade marks that contain a Māori sign, including imagery and text; and
(d)
deter counterfeit activity in relation to registered trade marks in New Zealand; and
(e)
ensure that New Zealand's trade mark regime takes account of international developments.
4-
Overview
In this Act,—
(a)
this Part deals with preliminary matters, including interpretation and the application of this Act to the Crown:
(b)
the main rights attaching to a registered trade mark (for example, the exclusive right to use the registered trade mark) are set out in section 10:
(c)
when a trade mark is registrable is set out in section 13. Other provisions relating to the registrability of trade marks are set out in sections 14 to 30:
(d)
the process for registering a trade mark is contained in Part 3:
(e)
remedies and offence provisions relating to the infringement of a registered trade mark, border protection measures concerning an infringing sign that is applied to goods in an overseas country, and general provisions about legal proceedings and appeals under this Act, are set out in Part 4:
(f)
Part 5 contains provisions about the Commissioner, the register of trade marks, and an advisory committee that has the function of advising the Commissioner whether the proposed registration of a trade mark that is, or appears to be, derivative of a Māori sign, including imagery and text, is offensive to Māori.
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Interpretation
(1)
In this Act, unless the context otherwise requires,—
Act includes regulations made under this Act
actual date of registration means the date entered on the register by the Commissioner under section 51(a)
advisory committee means the advisory committee appointed under section 177
applicant—
(a)
means a person who has applied for the registration of a trade mark; and
(b)
includes the assignee of an application, if the assignment has been effected under section 82
application—
(a)
means an application for the registration of a trade mark; and
(b)
includes an application for the registration of a series of trade marks
assignment means assignment by the acts of the parties concerned
certification trade mark means a sign capable of—
(a)
being represented graphically; and
(b)
distinguishing, in the course of trade,—
(i)
goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic from goods not so certified; or
(ii)
services certified by any person in respect of quality, accuracy, performance, or other characteristic from services not so certified
chief executive has the meaning set out in section 135
claimant has the meaning set out in section 135
collective association means a body (whether incorporated or not) that has or is able to have members, and is—
(a)
constituted for the joint benefit of its members for the time being; and
(b)
so constituted that its membership at any time can be ascertained
collective trade mark means a sign capable of—
(a)
being represented graphically; and
(b)
distinguishing the goods or services of members of the collective association that is the owner of the sign from those of persons who are not members of the collective association
Commissioner—
(a)
means the Commissioner of Trade Marks; and
(b)
to avoid doubt, includes an Assistant Commissioner of Trade Marks
condition includes a limitation of the exclusive right to use a trade mark given by the registration of the trade mark, including a limitation of that right as to—
(a)
mode of use:
(b)
use in relation to goods to be sold or otherwise traded in any place within New Zealand:
(c)
use in relation to services to be provided within New Zealand:
(d)
use in relation to goods to be exported to any market outside New Zealand
control of the Customs has the meaning set out in section 135
convention country, in any provision of this Act, means an entity for the time being declared by an order under section 200 to be a convention country for the purposes of that provision
convention country application means an application for the registration of a trade mark that is made in a convention country (whether before or after it became a convention country) and that is, in accordance with the—
(a)
terms of a treaty between 2 or more convention countries, equivalent to an application made in any one of those convention countries; or
(b)
law of any convention country, equivalent to an application made in that convention country
court means the High Court
Customs officer has the meaning set out in section 135
deceased owner—
(a)
means a registered owner of any trade mark who has died, whether before or after the commencement of this Act; and
(b)
includes an applicant for the registration of a trade mark who has died before it is registered, whether before or after the commencement of this Act
deemed date of registration means,—
(a)
in the case of a trade mark to which section 36 applies, the date of the application in the convention country (subject to any enactment relating to international arrangements):
(b)
in any other case, the date of the application
geographical indication has the same meaning as in section 2(1) of the Geographical Indications Act 1994
infringing goods, in relation to a registered trade mark, are goods that bear, or goods the packaging of which bears, a sign that is identical with or similar to the registered trade mark and—
(a)
the application of the sign to the goods or their packaging is an infringement of the registered trade mark; or
(b)
the sign has been used in relation to the goods or their packaging in a way that infringes the registered trade mark
infringing material, in relation to a registered trade mark, means material that bears a sign that is identical with or similar to the registered trade mark and either the sign is—
(a)
used for labelling or packaging goods, as a business paper, or for advertising goods or services, in a way that infringes the registered trade mark; or
(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 making copies of a sign that is identical or similar to the registered trade mark; and
(b)
in the possession, custody, or control 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
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 Indications 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 will or on his or her intestacy, will be adequately safeguarded if the Commissioner 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 their 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-distinctive character that do not substantially affect the identity of the trade mark; or
(iv)
colour
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 one 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
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 convention 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.
Compare: 1953 No 66 s 2(1), (4)
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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.
In this Act, unless the context otherwise requires, use, in relation to a trade mark, includes—
(a)
use in a form differing in elements 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 services 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.
Equities in respect of a registered trade mark may be enforced in the same way as equities in respect of any other personal property.
Compare: 1953 No 66 s 80(1)
Rights that attach to registered trade marks
10-
Rights that attach to registered trade marks
(1)
The owner of a registered trade mark has, 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.
