- Trade Marks Regulations 2003
- Order in Council
- Contents
- Part 1 Applications, notices, and requests to Commissioner
- Part 2 Addresses
- Part 3 Agents
- Part 4 Commissioner’s control of proceedings
- Part 5 Application for preliminary advice or for search of register
- Part 6 Application for registration of trade mark
- Part 7 Procedure after application for registration filed
- Part 8 Opposition to application for registration
- Part 9 Rectification
- Part 10 Revocation
- Part 11 Invalidity
- Part 12 Cancellation or alteration
- Part 13 Hearings
- Part 14 Registration
- Part 15 Application for conversion of specification
- Part 16 Assignment or transmission
- Part 17 Licensees
- Part 18 Border protection measures
- Part 19 Miscellaneous
- Part 20 Revocation of regulations
- Part 21 Fees
- Schedule 1 Fees
- Schedule 2 Form of notice under section 137 of Trade Marks Act2002
- Regulations
- 1 Title
- 2 Commencement
- 3 Interpretation
- Part 1 Applications, notices, and requests to Commissioner
- Part 2 Addresses
- Part 3 Agents
- 19 Definition of agent
- 20 Agent may act on behalf of principal for purposes of regulations
- 21 Commissioner may serve and give notices to agent
- 22 Principal of agent must file authority with Commissionerin certain cases
- 23 Commissioner may refuse to recognise person as agent
- 24 Commissioner must notify refusal to recognise
- 25 Notice to Commissioner of revocation or alteration of authority
- Part 4 Commissioner’s control of proceedings
- 26 Commissioner may require parties to attend case management conference
- 27 Commissioner may give directions
- 28 Commissioner may halt proceeding
- 29 Substitution of parties
- 30 Intervention by third party
- 31 Commissioner may require production of documents
- 32 Commissioner may extend time
- 33 Party filing evidence must copy evidence to opposite party
- 34 Evidence out of time
- 35 Application for permission to file evidence out of time
- 36 Vexatious applications
- Part 5 Application for preliminary advice or for search of register
- 37 Application for preliminary advice or for search of register
- 38 Information required for application for preliminary advice or search of register
- 39 Application for preliminary advice or search of register for goods and services in more than 1 class
- 40 Refund of fee if identical or similar trade mark subsequently identified
- Part 6 Application for registration of trade mark
- 41 Mandatory requirements for application for registration
- 42 Information required in application for registration on filing
- 43 Additional classes may be added after filing
- 44 Information that must be supplied before acceptance of application
- 45 Commissioner may request further information
- 46 Claim for convention priority must be made when application filed
- 47 Information required for claim for convention priority
- 48 Registration of trade mark including name or description that may vary in use
- 49 Division of trade mark application
- 50 Application for division
- 51 Information required for application for division
- 52 Effect of division
- 53 Division instead of striking out
- 54 When merger is allowed
- 55 Application for merger
- 56 Information required for application for merger
- 57 Requirements for certification trade mark application
- 58 Applicant may modify documents
- 59 Requirements for collective trade mark application
- Application for registration when owner or applicant dies
- Part 7 Procedure after application for registration filed
- Part 8 Opposition to application for registration
- Notice of opposition
- 73 Requirements for notice of opposition
- 74 Information required in notice of opposition
- 75 Time for filing notice of opposition
- 76 Notice of opposition sent in time if all parties agree
- 77 Commissioner must send copy of notice to applicant for registration
- 78 Commissioner must notify each opponent that notice of opposition filed
- Counter-statement
- Evidence
- Notice of opposition
- Part 9 Rectification
- Part 10 Revocation
- Part 11 Invalidity
- Part 12 Cancellation or alteration
- Part 13 Hearings
- Part 14 Registration
- Part 15 Application for conversion of specification
- Part 16 Assignment or transmission
- Part 17 Licensees
- Registration of licensees
- Alteration of registration of licensee
- Cancellation of registration of licensee
- 151 Application for cancellation of registration of licensee
- 152 Information required for application for cancellation of registration of licensee
- 153 Owner must send licensee copy of application to cancel
- 154 Intervention by owner or licensee
- 155 Commissioner’s powers on application for cancellation or alteration of registration of licensee
- Part 18 Border protection measures
- Part 19 Miscellaneous
- Part 20 Revocation of regulations
- Part 21 Fees
- Schedule 1 Fees
- Schedule 2 Form of notice under section 137 of Trade Marks Act 2002
- Trade Marks Amendment Regulations 2006
- Order in Council
- Regulations
- 1 Title
- 2 Commencement
- 5 Transitional provision for applications filed before 1 January 2007
- Contents
- Notes
Reprint as at 1 January 2007
Trade Marks Regulations 2003
(SR 2003/187)
Silvia Cartwright, Governor-General
Order in Council
At Wellington this 4th day of August 2003
Present: Her Excellency the Governor-General in Council
Pursuantto section199 oftheTradeMarksAct2002,HerExcellency the Governor-General, acting on the advice and with the consent of the Executive Council, makes the following regulations.
Contents
Page 1 Title 10
Note
Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this reprint.
Ageneraloutlineofthesechangesissetoutinthenotesattheendofthisreprint,togetherwith other explanatory material about this reprint.
These regulationsare administered by the Ministry of Economic Development.
1
2 Commencement 11 3 Interpretation 11
Part 1 Applications, notices, and requests to Commissioner
4 Documents must be in English or Māori 12 5 Form of documents filed in proceeding 12 6 Signatures 12 7 Electronic documents 13
8 Place where documents may be filed 13 9 Document filed when received in proper form 13 10 Filing date 14
11 Request to amend documents 14
Notice of application to court
12 Notice to Commissioner of application to court 14
13 Notification of address for service 15 14 Notification of business or residential address 15 15 Notification of communication address 15 16 Change of address 15 17 Notice of address or change of address 16 18 Sufficiency of address 16
19 Definition of agent 16 20 Agent may act on behalf of principal for purposes of 16 regulations 21 Commissioner may serve and give notices to agent 16 22 Principal of agent must file authority with Commissioner 17 in certain cases 23 Commissioner may refuse to recognise person as agent 17 24 Commissioner must notify refusal to recognise 18 25 Notice to Commissioner of revocation or alteration of 18 authority
Part 6 Application for registration of trade mark
41 Mandatory requirements for application for registration 25 42 Information required in application for registration on 25 filing 43 Additional classes may be added after filing 25 44 Information that must be supplied before acceptance of 26 application 45 Commissioner may request further information 27
46 Claim for convention priority must be made when 27 application filed 47 Information required for claim for convention priority 27
Registration of trade mark including name or description that may vary in use
48 Registration of trade mark including name or description 28 that may vary in use
49 Division of trade mark application 28 50 Application for division 28 51 Information required for application for division 28 52 Effect of division 29 53 Division instead of striking out 29
54 When merger is allowed 29 55 Application for merger 30 56 Information required for application for merger 30
Application for registration of certification trade mark
57 Requirements for certification trade mark application 30 58 Applicant may modify documents 30
Application for registration of collective trade mark
59 Requirements for collective trade mark application 31
Application for registration when owner or applicant dies
60 Application for registration without production of letters 31 of administration or probate
80 Information required in counter-statement 37 81 Commissioner must send copy of counter-statement to 38 opponent
82 Opponent must file evidence 38 83 Discontinuance of opposition 38 84 Applicant may file evidence 39 85 Evidence in reply 39
86 Application for rectification by Commissioner 39 87 Information required for application for rectification 39
88 Owner may oppose rectification 40 89 Requirements for counter-statement to application for 40 rectification
90 Applicant for rectification must file evidence 40 91 Discontinuance of application 41 92 Owner may file evidence 41 93 Applicant’s evidence in reply 41
Application to Commissioner for revocation
94 Application to Commissioner for revocation 41 95 Information required for application for revocation 42
Opposition to application for revocation for non-use
96 Owner or licensee may oppose revocation by filing 42 counter-statement and evidence of use 97 Requirements for counter-statement to application for 43 revocation for non-use
98 Applicant for revocation for non-use must file evidence 43 99 Owner or licensee may file evidence 44 100 Applicant may file evidence in reply 44
Opposition to application for revocation on grounds other than non-use
101 Owner or licensee may oppose revocation by filing 44 counter-statement
102 Requirements for counter-statement to application for 45 revocation on grounds other than non-use
103 Applicant for revocation on grounds other than non-use 45 must file evidence
104 Person opposing may file evidence in support of 46 registration
105 Applicant may file evidence in reply 46
Application to Commissioner for declaration for invalidity
106 Application to Commissioner for declaration of invalidity 46
107 Information required for application for declaration of 46 invalidity
Opposition to application for declaration of invalidity
108 Owner may oppose application for declaration of 47 invalidity by filing counter-statement
109 Requirements for counter-statement to application for 47 declaration of invalidity
110 Applicantfordeclarationofinvaliditymustfileevidence 48 111 Owner may file evidence 48 112 Applicant may file evidence in reply 48
Part 12 Cancellation or alteration
Application by aggrieved person for cancellation or alteration of registration
114 Application by aggrieved person for cancellation or 49 alteration
115 Information required for application for cancellation or 50 alteration
Opposition to cancellation or alteration
116 Owner may oppose cancellation or alteration 50 117 Requirements for counter-statement to application for 50 cancellation or alteration
118 Applicantforcancellationoralterationmustfileevidence 51 119 Discontinuance of application 51 120 Owner may file evidence 51 121 Applicant’s evidence in reply 52
122 Form of hearing 52 123 Hearing before exercise of Commissioner’s discretion 52 124 Hearing in certain proceedings 53 125 Notice of hearing by appearance 53 126 Hearing fee 53 127 Venue for hearing by appearance 54 128 Conduct of hearing by appearance 54
129 Additional contents of the register 54 130 Certificate of registration 55 131 Certified copy of entry in register 55
132 Notice of expiry 56 133 Application for renewal 56
134 Commissioner may specify conditions for restoration to 57 register
135 Request for alteration of owner’s or licensee’s name or 57 address 136 Request to strike out goods or services, or classes of 57 goods or services 137 Request for entry of memorandum on register 58
Part 18 Border protection measures
156 Form of section 137 notice 65 157 Evidence in support of claim 65 158 Notice of assignment, transmission, and other matters 65 159 Security and indemnity 65 160 Disposal of forfeited goods 66
161 Advertisement by Commissioner 66 162 Commissioner must notify decision 66 163 Commissionermustgivereasonsfordecisionifrequired 67 164 Commissioner may waive requirement for information 67
Part 20 Revocation of regulations
165 Trade Marks Regulations 1954 revoked 67 166 Trade Marks (Border Protection and Transitional 67 Applications) Regulations 1994 revoked
167 Amount of fees 67 168 Commissioner may refuse to take step before fee paid 68 169 Requirement that prescribed fee accompany document 68 to be filed 170 Form of payment 68 171 Currency 68
Schedule 2 70 Form of notice under section 137 of Trade Marks Act 2002
Regulations 1 Title
These regulations are the Trade Marks Regulations 2003.
2 Commencement
These regulations come into force on 20 August 2003.
3 Interpretation
In these regulations, unless the contextotherwise requires,— Act means the Trade Marks Act 2002 address for service means— - (a)
- a business or residential address in New Zealand; or
- (b)
- a post office box in New Zealand; or
- (c)
- a document exchange box in New Zealand agent has the meaning set out in regulation 19 business or residential address means a physical street ad
dress, whether in or outside New Zealand; and does not include—
- (a)
- an electronic address:
- (b)
- a post office box:
- (c)
- a document exchange box
class meansaclassofgoodsorservicesaccordingtotheNice Classification CommissionermeanstheCommissionerofTradeMarks;and
includes an Assistant Commissioner of Trade Marks
communicationaddressmeansanyaddressinoroutsideNew Zealand; and includes an electroni
Silvia Cartwright, Governor-General
At Wellington this 4th day of August 2003
Present: Her Excellency the Governor-General in Council
Pursuantto section199 oftheTradeMarksAct2002,HerExcellency the Governor-General, acting on the advice and with the consent of the Executive Council, makes the following regulations.
Contents
Page 1 Title 10
Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this reprint.
Ageneraloutlineofthesechangesissetoutinthenotesattheendofthisreprint,togetherwith other explanatory material about this reprint.
1
2 Commencement 11 3 Interpretation 11
Part 1 Applications, notices, and requests to Commissioner
4 Documents must be in English or Māori 12 5 Form of documents filed in proceeding 12 6 Signatures 12 7 Electronic documents 13
8 Place where documents may be filed 13 9 Document filed when received in proper form 13 10 Filing date 14
11 Request to amend documents 14
Notice of application to court
12 Notice to Commissioner of application to court 14
13 Notification of address for service 15 14 Notification of business or residential address 15 15 Notification of communication address 15 16 Change of address 15 17 Notice of address or change of address 16 18 Sufficiency of address 16
19 Definition of agent 16 20 Agent may act on behalf of principal for purposes of 16 regulations 21 Commissioner may serve and give notices to agent 16 22 Principal of agent must file authority with Commissioner 17 in certain cases 23 Commissioner may refuse to recognise person as agent 17 24 Commissioner must notify refusal to recognise 18 25 Notice to Commissioner of revocation or alteration of 18 authority Part 6 Application for registration of trade mark
41 Mandatory requirements for application for registration 25 42 Information required in application for registration on 25 filing 43 Additional classes may be added after filing 25 44 Information that must be supplied before acceptance of 26 application 45 Commissioner may request further information 27
46 Claim for convention priority must be made when 27 application filed 47 Information required for claim for convention priority 27
Registration of trade mark including name or description that may vary in use
48 Registration of trade mark including name or description 28 that may vary in use
49 Division of trade mark application 28 50 Application for division 28 51 Information required for application for division 28 52 Effect of division 29 53 Division instead of striking out 29
54 When merger is allowed 29 55 Application for merger 30 56 Information required for application for merger 30
Application for registration of certification trade mark
57 Requirements for certification trade mark application 30 58 Applicant may modify documents 30
Application for registration of collective trade mark
59 Requirements for collective trade mark application 31
Application for registration when owner or applicant dies
60 Application for registration without production of letters 31 of administration or probate 80 Information required in counter-statement 37 81 Commissioner must send copy of counter-statement to 38 opponent
82 Opponent must file evidence 38 83 Discontinuance of opposition 38 84 Applicant may file evidence 39 85 Evidence in reply 39
86 Application for rectification by Commissioner 39 87 Information required for application for rectification 39
88 Owner may oppose rectification 40 89 Requirements for counter-statement to application for 40 rectification
90 Applicant for rectification must file evidence 40 91 Discontinuance of application 41 92 Owner may file evidence 41 93 Applicant’s evidence in reply 41
Application to Commissioner for revocation
94 Application to Commissioner for revocation 41 95 Information required for application for revocation 42
Opposition to application for revocation for non-use
96 Owner or licensee may oppose revocation by filing 42 counter-statement and evidence of use 97 Requirements for counter-statement to application for 43 revocation for non-use
98 Applicant for revocation for non-use must file evidence 43 99 Owner or licensee may file evidence 44 100 Applicant may file evidence in reply 44
Opposition to application for revocation on grounds other than non-use
101 Owner or licensee may oppose revocation by filing 44 counter-statement
102 Requirements for counter-statement to application for 45 revocation on grounds other than non-use
103 Applicant for revocation on grounds other than non-use 45 must file evidence
104 Person opposing may file evidence in support of 46 registration
105 Applicant may file evidence in reply 46
Application to Commissioner for declaration for invalidity
106 Application to Commissioner for declaration of invalidity 46
107 Information required for application for declaration of 46 invalidity
Opposition to application for declaration of invalidity
108 Owner may oppose application for declaration of 47 invalidity by filing counter-statement
109 Requirements for counter-statement to application for 47 declaration of invalidity
110 Applicantfordeclarationofinvaliditymustfileevidence 48 111 Owner may file evidence 48 112 Applicant may file evidence in reply 48
Part 12 Cancellation or alteration
Application by aggrieved person for cancellation or alteration of registration
114 Application by aggrieved person for cancellation or 49 alteration
115 Information required for application for cancellation or 50 alteration
Opposition to cancellation or alteration
116 Owner may oppose cancellation or alteration 50 117 Requirements for counter-statement to application for 50 cancellation or alteration
118 Applicantforcancellationoralterationmustfileevidence 51 119 Discontinuance of application 51 120 Owner may file evidence 51 121 Applicant’s evidence in reply 52
122 Form of hearing 52 123 Hearing before exercise of Commissioner’s discretion 52 124 Hearing in certain proceedings 53 125 Notice of hearing by appearance 53 126 Hearing fee 53 127 Venue for hearing by appearance 54 128 Conduct of hearing by appearance 54
129 Additional contents of the register 54 130 Certificate of registration 55 131 Certified copy of entry in register 55
132 Notice of expiry 56 133 Application for renewal 56
134 Commissioner may specify conditions for restoration to 57 register
135 Request for alteration of owner’s or licensee’s name or 57 address 136 Request to strike out goods or services, or classes of 57 goods or services 137 Request for entry of memorandum on register 58 Part 18 Border protection measures
156 Form of section 137 notice 65 157 Evidence in support of claim 65 158 Notice of assignment, transmission, and other matters 65 159 Security and indemnity 65 160 Disposal of forfeited goods 66
161 Advertisement by Commissioner 66 162 Commissioner must notify decision 66 163 Commissionermustgivereasonsfordecisionifrequired 67 164 Commissioner may waive requirement for information 67
Part 20 Revocation of regulations
165 Trade Marks Regulations 1954 revoked 67 166 Trade Marks (Border Protection and Transitional 67 Applications) Regulations 1994 revoked
167 Amount of fees 67 168 Commissioner may refuse to take step before fee paid 68 169 Requirement that prescribed fee accompany document 68 to be filed 170 Form of payment 68 171 Currency 68
Schedule 2 70 Form of notice under section 137 of Trade Marks Act 2002
These regulations are the Trade Marks Regulations 2003.
These regulations come into force on 20 August 2003.
In these regulations, unless the contextotherwise requires,— Act means the Trade Marks Act 2002 address for service means— class meansaclassofgoodsorservicesaccordingtotheNice Classification CommissionermeanstheCommissionerofTradeMarks;and
includes an Assistant Commissioner of Trade Marks
communicationaddressmeansanyaddressinoroutsideNew Zealand; and includes an electroni Order in Council
Note
These regulationsare administered by the Ministry of Economic Development.
Regulations 1 Title
2 Commencement
3 Interpretation