Reprint as at 29 April 2013
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
Pursuant to section 199 of the TradeMarks Act 2002, Her Excellency the Governor-General, acting on the advice and with the consent of the Executive Council, makes the following regulations.
Contents Page
1 Title 11 2 Commencement 11 3 Interpretation 12
Note Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this reprint. A general outline of these changes is set out in the notes at the end of this reprint, together with other explanatory material about this reprint. These regulations are administered by the Ministry of Business, Innovation, and Employment.
1
Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Part 1 Applications, notices, and requests to Commissioner
Documents 4 Documents must be in English or Māori 13 5 Form of documents filed in proceeding 13 6 Signatures 13 7 Electronic documents 14
Filing documents 8 Information or documents must be given electronically
through case management facility 14
9 Document filed when received in proper form 15 10 Filing date 16
Amendment of documents 11 Request to amend documents 16 11A Request to amend pleadings 16
Notice of application to court 12 Notice to Commissioner of application to court 17
Part 2 Addresses
13 Notification of address for service 18 14 Notification of business or residential address [Revoked] 18 15 Notification of communication address 18 16 Change of address 18 17 Notice of address or change of address 18 17A Commissioner may require address for service to be filed 19 18 Sufficiency of address 19
Part 3 Agents
19 Definition of agent 19 20 Agent may act on behalf of principal for purposes of
regulations 19
21 Commissioner may serve and give notices to agent 20 22 Commissioner may require principal of agent to file
authority with Commissioner in certain cases 20
23 Commissioner may refuse to recognise person as agent 21 24 Commissioner must notify refusal to recognise 22 25 Notice to Commissioner of revocation or alteration of
authority 22
25A Notice of revocation of authority may be given by agent 22
2
Reprinted as at 29 April 2013 Trade Marks Regulations 2003
Part 4 Commissioner’s control of proceedings
Case management 26 Commissioner may require parties to attend case
management conference 23
27 Parties must comply with Commissioner’s directions at case management conference
24
Halt in proceedings 28 Commissioner may halt proceeding 25
Parties 29 Substitution of parties 25 30 Intervention by third party 26
Production of documents 31 Commissioner may require production of documents 26
Consolidation of proceedings 31A Commissioner may consolidate proceedings 28
Extension of time 32 Commissioner may extend time 29
Evidence 33 Party filing evidence must copy evidence to opposite party 29 34 Evidence out of time 29 35 Application for permission to file evidence out of time 30 35A Right to file evidence in reply if evidence in chief
permitted out of time 31
35B Evidence from another proceeding 31 35C Commissioner may require parties to use best endeavours
to reach confidentiality agreement 32
Vexatious applications 36 Vexatious applications 32
Part 5 Application for preliminary advice or for search of
register 37 Application for preliminary advice or for search of
register 33
38 Information required for application for preliminary advice or search of register
33
3
Trade Marks Regulations 2003 Reprinted as at 29 April 2013
39 Application for preliminary advice or search of register for goods and services in more than 1 class
33
40 Refund of fee if identical or similar trade mark subsequently identified
33
Part 6 Application for registration of trade mark
Requirements for application 41 Mandatory requirements for application for registration 34 42 Information required in application for registration on
filing 34
43 Additional classes may be added until acceptance 35 44 Information that must be supplied before acceptance of
application 35
45 Commissioner may request further information 36
Claim for convention priority 46 Claim for convention priority must be made when
application filed 36
47 Information required for claim for convention priority 37
Registration of trade mark including name or description that may vary in use
48 Registration of trade mark including name or description that may vary in use
37
Division 49 Division of trade mark application 38 50 Application for division 38 51 Information required for application for division 38 52 Effect of division 39 53 Division instead of striking out 39
Merger 54 When merger is allowed 39 55 Application for merger 39 56 Information required for application for merger 40
Application for registration of certification trade mark 57 Requirements for certification trade mark application 40 58 Applicant may modify documents 40
Application for registration of collective trade mark 59 Requirements for collective trade mark application 40
4
Reprinted as at 29 April 2013 Trade Marks Regulations 2003
Application for registration when owner or applicant dies 60 Application for registration without production of letters
of administration or probate 41
Part 7 Procedure after application for registration filed
Non-compliance 61 Deadline for response to notice of non-compliance 42 62 Applicant may request extension of time to comply 42 62A Applicant for registration of trade mark entitled to 1
extension in certain circumstances 43
63 Applicant must notify Commissioner of related proceeding
43
64 Applicant must notify Commissioner of outcome of related proceeding
43
Withdrawal of application for registration 65 Notification of withdrawal of application for registration 44
Alteration of application for registration 66 Request for alteration of application 44 67 Commissioner must notify applicant of intention to reject
alteration 45
68 Commissioner must hold hearing 45
Rejection of application for registration 69 Commissioner must notify applicant of intention to reject
application 45
70 Commissioner must hold hearing 46
Revocation of acceptance 71 Commissioner must notify applicant of intention to revoke
acceptance 46
72 Commissioner must hold hearing 47
Part 8 Opposition to application for registration
Notice of opposition 73 Requirements for notice of opposition 47 74 Information required in notice of opposition 47 75 Time for filing notice of opposition 48 76 Notice of opposition sent in time if all parties agree 48 77 Commissioner must send copy of notice to applicant for
registration 48
5
Trade Marks Regulations 2003 Reprinted as at 29 April 2013
78 Commissioner must notify each opponent that notice of opposition filed
48
Counter-statement 79 Time for sending counter-statement 48 80 Information required in counter-statement 49 81 Commissioner must send copy of counter-statement to
opponent 49
Evidence 82 Opponent must file evidence 49 83 Discontinuance of opposition 50 84 Applicant may file evidence 50 85 Evidence in reply 50
Part 9 Rectification
86 Application for rectification by Commissioner 50 87 Information required for application for rectification 50
Opposition to rectification 88 Owner may oppose rectification 51 89 Requirements for counter-statement to application for
rectification 51
Evidence 90 Applicant for rectification must file evidence 52 91 Discontinuance of application 52 92 Owner may file evidence 52 93 Applicant’s evidence in reply 53
Part 10 Revocation
Application to Commissioner for revocation 94 Application to Commissioner for revocation 53 95 Information required for application for revocation 53
Opposition to application for revocation for non-use 96 Owner or licensee may oppose revocation by filing
counter-statement and evidence of use 54
97 Requirements for counter-statement to application for revocation for non-use
54
Evidence 98 Applicant for revocation for non-use must file evidence 55
6
Reprinted as at 29 April 2013 Trade Marks Regulations 2003
99 Owner or licensee may file evidence 55 100 Applicant may file evidence in reply 56
Opposition to application for revocation on grounds other than non-use
101 Owner or licensee may oppose revocation by filing counter-statement
56
102 Requirements for counter-statement to application for revocation on grounds other than non-use
56
Evidence 103 Applicant for revocation on grounds other than non-use
must file evidence 57
104 Person opposing may file evidence in support of registration
57
105 Applicant may file evidence in reply 57
Part 11 Invalidity
Application to Commissioner for declaration for invalidity 106 Application to Commissioner for declaration of invalidity 58 107 Information required for application for declaration of
invalidity 58
Opposition to application for declaration of invalidity 108 Owner may oppose application for declaration of
invalidity by filing counter-statement 59
109 Requirements for counter-statement to application for declaration of invalidity
59
Evidence 110 Applicant for declaration of invalidity must file evidence 59 111 Owner may file evidence 60 112 Applicant may file evidence in reply 60
Part 12 Cancellation or alteration Voluntary cancellation
113 Voluntary cancellation 60
Application by aggrieved person for cancellation or alteration of registration
114 Application by aggrieved person for cancellation or alteration
61
7
Trade Marks Regulations 2003 Reprinted as at 29 April 2013
115 Information required for application for cancellation or alteration
61
Opposition to cancellation or alteration 116 Owner may oppose cancellation or alteration 62 117 Requirements for counter-statement to application for
cancellation or alteration 62
Evidence 118 Applicant for cancellation or alteration must file evidence 63 119 Discontinuance of application 63 120 Owner may file evidence 63 121 Applicant’s evidence in reply 63
Part 13 Hearings
122 Form of hearing 64 123 Hearing before exercise of Commissioner’s discretion 64 124 Hearing in certain proceedings 65 125 Notice of hearing by appearance 65 126 Hearing fee 66 127 Venue for hearing by appearance 66 128 Conduct of hearing by appearance 66
Part 14 Registration General
129 Additional contents of register 67 130 Certificate of registration 67 131 Certified copy of entry in register 68
Division of trade mark registration 131A Owner of trade mark may apply for division of registration 68 131B Information required for application for division 69 131C Effect of division of registration 69
Renewal of registration 132 Notice of expiry 69 133 Application for renewal 70
Restoration to register 134 Commissioner may specify conditions for restoration to
register 70
8
Reprinted as at 29 April 2013 Trade Marks Regulations 2003
Alteration of register 135 Request for alteration of owner’s name or address 70 136 Request to strike out goods or services, or classes of
goods or services 71
137 Request for entry, alteration, or removal of memorandum on register
71
Voluntary disclaimer 138 Notice of voluntary disclaimer of trade mark by owner 72
Part 15 Application for conversion of specification
139 Application for conversion of specification 72 140 Information required for application for conversion 72 141 Applicant may nominate registration in additional classes 73 142 Proposed form of conversion 73
Part 15A Conversion of specification by Commissioner
142A Application 73 142B Conversion process 74 142C Where owner fails to respond 74 142D Response by owner 75
Part 16 Assignment or transmission Commissioner’s certificate
143 Request for Commissioner’s certificate [Revoked] 75 144 Information that must be contained in request for
certificate [Revoked] 75
145 Application to register title to trade mark 75 146 Information required for application to register title to
trade mark 75
Part 16A Enforcement officers
146A Form of warrant of appointment of enforcement officer 77 146B Form of warrant to search place or thing 77 146C Form of order to produce documents under section 134Y
of Act 77
Part 17 Licensees [Revoked]
9
Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Registration of licensees [Revoked]
147 Application for registration of licensee [Revoked] 78 148 Information required for application for registration of
licensee [Revoked] 78
Alteration of registration of licensee [Revoked]
149 Application for alteration of registration of licensee [Revoked]
78
150 Information required for application for alteration of registration of licensee [Revoked]
78
Cancellation of registration of licensee [Revoked]
151 Application for cancellation of registration of licensee [Revoked]
79
152 Information required for application for cancellation of registration of licensee [Revoked]
79
153 Owner must send licensee copy of application to cancel [Revoked]
79
154 Intervention by owner or licensee [Revoked] 79 155 Commissioner’s powers on application for cancellation or
alteration of registration of licensee [Revoked] 79
Part 18 Border protection measures
156 Form of section 137 notice 79 157 Evidence in support of claim 80 158 Notice of assignment, transmission, and other matters 80 159 Security and indemnity 80 160 Disposal of forfeited goods 80 160A Form of notice to produce documents concerning goods
in control of Customs 81
160B Form of notice to appear and answer questions concerning goods in control of Customs
81
160C Form of application by Customs officer for order to produce documents
81
160D Form of order to produce documents under section 155E of Act
81
160E Form of application by Customs officer for search warrant 81 160F Form of warrant to Customs officer to search place or
thing 82
10
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 r 2
Part 19 Miscellaneous
161 Advertisement by Commissioner 82 162 Commissioner must notify decision 82 163 Commissioner must give reasons for decision if required 82 164 Commissioner may waive requirement for information 83
Part 20 Revocation of regulations
165 Trade Marks Regulations 1954 revoked 83 166 Trade Marks (Border Protection and Transitional
Applications) Regulations 1994 revoked 83
Part 21 Fees
167 Amount of fees 83 168 Commissioner may refuse to take step before fee paid 83 169 Requirement that prescribed fee accompany document
to be filed 84
170 Form of payment 84 171 Currency 84
Schedule 1 85 Fees
Schedule 1A 86 Forms relating to enforcement officers
Schedule 2 92 Form of notice under section 137 of Trade Marks Act
2002
Schedule 3 93 Forms relating to Customs officers
Regulations 1 Title
These regulations are the Trade Marks Regulations 2003.
2 Commencement These regulations come into force on 20 August 2003.
11
r 3 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
3 Interpretation In these regulations, unless the context otherwise requires,— Act means the Trade Marks Act 2002 address for service means–– (a) a postal address in New Zealand; or (b) a post office box or document exchange box in New
Zealand agent has the meaning set out in regulation 19 case management facility means the case management facil- ity that may be accessed through the Commissioner’s website or web services classmeans a class of goods or services according to the Nice Classification Commissionermeans the Commissioner of TradeMarks; and includes an Assistant Commissioner of Trade Marks communication addressmeans any address in or outsideNew Zealand; and includes an electronic address filing date means the date when a document is received at the Patent Office or by the Commissioner, as the case may be hearing has the meaning set out in regulation 122 Nice Classification has the meaning given to it in section 5(1) of the Act proceeding includes an application, request, or hearing in ac- cordance with these regulations register means the register of trade marks kept under section 181 of the Act. Regulation 3 address for service: replaced, on 10 December 2012, by regula- tion 4(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 3 business address or residential address: revoked, on 10 Decem- ber 2012, by regulation 4(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 3 case management facility: inserted, on 10 December 2012, by regulation 4(3) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 3 filing date: replaced, on 10 December 2012, by regulation 4(3) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 3 Nice Classification: replaced, on 16 September 2011, by section 28(2) of the Trade Marks Amendment Act 2011 (2011 No 71).
12
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 1 r 6
Part 1 Applications, notices, and requests to
Commissioner Documents
4 Documents must be in English or Māori (1) Subject to subclause (3), all documents filed with the Com-
missioner must be in English or Māori. (2) The Commissioner may require a person who files a document
in Māori to provide the Commissioner with a translation into English within the time that the Commissioner specifies.
(3) A person may, if it is necessary to do so, file a document that is not in English orMāori (for example, a convention document), but the document must be accompanied by a translation. Regulation 4(2): amended, on 10 December 2012, by regulation 5 of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 4(3): amended, on 10 December 2012, by regulation 5 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
5 Form of documents filed in proceeding A document, including written evidence, or bundle of docu- ments filed with the Commissioner in a proceeding under the Act or these regulations must contain the following informa- tion: (a) the name and address for service of the person filing the
document: (b) if that person has an agent, the agent’s name: (c) the number of the trade mark application or registration
that is the subject of the proceeding.
6 Signatures (1) In the following cases, a document must be signed for the pur-
poses of these regulations as follows: (a) in the case of a partnership, the document must—
(i) contain the full names of all partners, unless a list of the current members of the partnership has been filed with the Commissioner; and
13
Part 1 r 7 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(ii) be signed by a qualified partner or any other per- son who has, to the Commissioner’s satisfaction, authority to sign:
(b) in the case of a body corporate, the document must be signed by a director or other principal officer, or any other person who has, to the satisfaction of the Com- missioner, authority to sign:
(c) in the case of an unincorporated association, the docu- ment may be signed by any person who appears to the Commissioner to be duly qualified.
(2) A document may be signed in accordance with section 22 of the Electronic Transactions Act 2002 .
(3) An application made in accordance with these regulations by 2 or more joint applicants, and any document required to be signed that is part of the application, must be signed by each applicant. Regulation 6(2): amended, on 10 December 2012, by regulation 6 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
7 Electronic documents (1) Any requirement in these regulations that a document must be
in writing is satisfied if the document complies with section 18 of the Electronic Transactions Act 2002.
(2) [Revoked] Regulation 7(1): amended, on 10 December 2012, by regulation 7(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 7(2): revoked, on 10December 2012, by regulation 7(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Filing documents 8 Information or documents must be given electronically
through case management facility (1) In this regulation,—
give means issue, supply, produce, provide, file, send, serve, or give in any other way information or document means any evidence, application, authority, request, form, certificate, statement, notice, or any other type of information or document that— (a) is referred to in the Act or these regulations; and
14
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 1 r 9
(b) relates to any trade mark application or registration, or proceedings.
(2) Any information or document that a person must or may give to the Commissioner pursuant to any provision of the Act or these regulationsmust be given to the Commissioner bymeans of the case management facility.
(3) Despite subclause (2), if the Commissioner is satisfied that a person is unable to access the case management facility be- cause of any exceptional circumstances beyond the person’s control, the Commissioner may approve other means by which the information or document must be given to the Commis- sioner.
(4) Any information or document that the Commissioner must or may give to a person pursuant to any provision of the Act or these regulations may be given to the person by means of the case management facility.
(5) If the Commissioner gives any information or document to a person by means of the case management facility, the time at which that document or information is given to the person is when the information or document becomes accessible to the person through the case management facility. Regulation 8: replaced, on 10 December 2012, by regulation 8 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
9 Document filed when received in proper form (1) A document is filed with the Commissioner when it is received
in proper form. (2) A document is in proper form only if—
(a) it is legible; and (b) it complies with the requirements of the Act and these
regulations; and (c) it is accompanied by the prescribed fee, if any. Regulation 9: replaced, on 10 December 2012, by regulation 8 of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 9(2)(c): amended, on 29 April 2013, by regulation 4 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
15
Part 1 r 10 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
10 Filing date If a document is received on a day that is not a working day, or on the day that is the anniversary day for Wellington, the filing date of the document is the next working day.
Amendment of documents 11 Request to amend documents (1) A request under section 194 of the Act to amend an applica-
tion, notice, or document must— (a) be in writing; and (b) contain the information specified in subclause (2); and (c) be signed by the person making it.
(2) The request must contain the following information: (a) the name and address for service of the person request-
ing the amendment: (b) if that person has an agent, the agent’s name: (c) details of the application, notice, or document to be
amended: (d) details of the amendment.
(3) A request to amend a document that is a pleading within the meaning of regulation 11A(1) must comply with this regula- tion and regulation 11A. Regulation 11(3): inserted, on 29April 2013, by regulation 5 of the TradeMarks Amendment Regulations 2013 (SR 2013/49).
11A Request to amend pleadings (1) In this regulation, pleading means—
(a) a notice of opposition; or (b) an application for rectification or revocation, declar-
ation of invalidity, cancellation, or alteration; or (c) a counter-statement.
(2) A request under section 194 of the Act to amend a pleading must, in addition to complying with regulation 11, be made prior to the hearing to which the pleading relates.
(3) If a request to amend a pleading is made,— (a) the Commissioner must, on receipt of the request, notify
the opposite party of the request; and
16
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 1 r 12
(b) the opposite party maymake submissions on the request within a time specified by the Commissioner; and
(c) the Commissioner must, after considering those sub- missions (if any), notify the parties of the decision that the Commissioner intends to make on the request.
(4) If the Commissioner intends to allow an amendment to a pleading described in subclause (1)(a) or (b), the Commis- sioner must give the opposite party an opportunity to file, within a time specified by the Commissioner, an amended counter-statement. Regulation 11A: inserted, on 29 April 2013, by regulation 6 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
Notice of application to court 12 Notice to Commissioner of application to court (1) A person who applies to the court under the following sections
of the Act must, as soon as practicable, serve the application on the Commissioner: (a) section 62: (b) section 65: (c) section 73: (d) section 76.
(2) The party who made the application must, as soon as practic- able— (a) after the court has decided the application, notify the
Commissioner of the result and, if an order has been sealed, provide the Commissioner with a copy of the order; or
(b) after the application is withdrawn or discontinued, no- tify the Commissioner of that event.
(3) The Commissioner may, if the Commissioner thinks it appro- priate, publish any order made by the court on an application or an appeal under the Act. Regulation 12(2): replaced, on 10 December 2012, by regulation 9 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
17
Part 2 r 13 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Part 2 Addresses
13 Notification of address for service (1) The following persons must file a notice of address for service
with the Commissioner: (a) an applicant in an application made in accordance with
these regulations: (b) the owner of a trade mark registered under the Act: (c) an agent: (d) any party to a proceeding under these regulations.
(2) For the purpose of any communication with the Commissioner in the name of 2 or more persons with different addresses, the Commissioner may require 1 address for service to be filed. Regulation 13: replaced, on 10 December 2012, by regulation 10 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
14 Notification of business or residential address [Revoked] Regulation 14: revoked, on 10 December 2012, by regulation 10 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
15 Notification of communication address A person may file a notice of a communication address with the Commissioner for the purpose of receiving general corres- pondence.
16 Change of address A person who has filed a notice of an address for service or communication address must, if the address has changed, as soon as practicable, file a notice of change of address. Regulation 16: amended, on 10 December 2012, by regulation 11 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
17 Notice of address or change of address A notice of address or a notice of change of address must— (a) be in writing; and (b) contain the name and the new address of the person
giving the notice.
18
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 3 r 20
(c) [Revoked] Regulation 17(b): amended, on 29 April 2013, by regulation 7(1) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 17(c): revoked, on 29 April 2013, by regulation 7(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
17A Commissioner may require address for service to be filed The Commissioner may, for the purposes of any procedure involving the Commissioner, require the owner of a trademark or an applicant to file an address for service if the owner or applicant— (a) does not have an agent with a NewZealand address; and (b) is not domiciled in New Zealand or does not have a real
or effective industrial or commercial establishment in New Zealand.
Regulation 17A: inserted, on 10 December 2012, by regulation 12 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
18 Sufficiency of address An address that is notified to the Commissioner under these regulations must be sufficiently detailed to enable the Com- missioner to contact the addressee at that address.
Part 3 Agents
19 Definition of agent In these regulations, unless the context otherwise requires, agent means a person— (a) who is authorised by the agent’s principal (X) to act for
X in any proceeding in accordance with these regula- tions or to take any step on X’s behalf under these regu- lations; and
(b) for whom recognition has not been refused by the Com- missioner under regulation 23.
20 Agent may act on behalf of principal for purposes of regulations
(1) Subject to the scope of the agent’s authority, an agent may act for the agent’s principal (X) in any proceeding in accordance
19
Part 3 r 21 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
with these regulations or take any step (including signature of documents) on X’s behalf under these regulations.
(2) However, the Commissioner may in any case require that a document that must be signed for the purposes of these regu- lations be signed by the principal and not by the agent.
21 Commissioner may serve and give notices to agent (1) The Commissioner satisfies any requirement under these regu-
lations of service on, notice to, or correspondence with a per- son by serving on, giving notice to, or corresponding with that person’s agent.
(2) Subclause (1) does not apply to the extent that any written authority filed with the Commissioner by the agent’s principal expressly excludes the authority of the agent for any of the matters specified in subclause (1).
22 Commissioner may require principal of agent to file authority with Commissioner in certain cases
(1) This rule applies if— (a) the Commissioner receives a communication from a
person who refers to himself or herself in the commu- nication as an agent (A) of a principal (X) and, at the time of the communication, the Commissioner does not have an authority in respect of A that complies with the requirements in subclause (3); or
(b) the Commissioner has an authority in respect of an agent that complies with the requirements in subclause (3) and the Commissioner receives a communication informing the Commissioner that the principal (X) has appointed a new agent (A).
(2) The Commissioner may, by notice in writing, require X to file with the Commissioner, within the specified time, a written authority in respect of A.
(3) The written authority must— (a) be signed by X and not by any agent; and (b) contain the following information:
(i) A’s name and address for service; and
20
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 3 r 23
(ii) if A is authorised to act in respect of a particular trade mark, the number of the trade mark; and
(iii) a statement of any limitation on the authority of A to act on X’s behalf.
(4) In subclause (2),— (a) specified time means the time that the Commissioner
specifies in the notice given under subclause (2); and (b) the specified time must be,—
(i) if X’s address is in New Zealand, not less than 1 month from the date on which the Commis- sioner receives the communication referred to in subclause (1):
(ii) if X’s address is outside New Zealand, not less than 2 months from the date on which the Com- missioner receives the communication referred to in subclause (1).
Regulation 22: replaced, on 10 December 2012, by regulation 13 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
23 Commissioner may refuse to recognise person as agent The Commissioner may refuse to recognise a person as an agent— (a) who is suspended from practice before the Patent Of-
fice; or (b) whose name has been removed from the register of
patent attorneys under section 102 of the Patents Act 1953, and has not been restored to the register; or
(c) whose name has been removed from or struck off the roll of barristers and solicitors under the provisions of the Lawyers and Conveyancers Act 2006, and has not been restored to the roll; or
(d) who is suspended from practice as a barrister or solici- tor; or
(e) who has been convicted of an offence specified in Part 10 (except sections 293 to 305) of the Crimes Act 1961 or who has been convicted of an equivalent offence in another country.
Regulation 23(c): amended, on 10 December 2012, by regulation 14 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
21
Part 3 r 24 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
24 Commissioner must notify refusal to recognise If the Commissioner refuses to recognise a person as an agent, the Commissioner must, as soon as practicable, notify that per- son and that person’s principal in writing.
25 Notice to Commissioner of revocation or alteration of authority
(1) A principal (X) must, as soon as practicable, give written no- tice to the Commissioner of the revocation or alteration of the authority of X’s agent (A).
(2) The notice must— (a) be signed by X, and not by an agent; and (b) contain the information set out in subclause (3).
(3) The notice must contain the following information: (a) X’s name and address for service: (b) A’s name: (c) if A is authorised to act in respect of a particular trade
mark, the number of that trade mark: (d) if A’s authority is revoked, a statement to that effect: (e) if A’s authority is altered, a statement setting out—
(i) the alteration in authority; and (ii) the matters for which A continues to have author-
ity. (4) Notice to the Commissioner of the revocation or alteration of
the authority of an agent is effective— (a) if it complies with this regulation; and (b) when it is received by the Commissioner.
25A Notice of revocation of authority may be given by agent (1) An agent (A) of a principal (X) may give written notice to the
Commissioner of the revocation of A’s authority as X’s agent. (2) The notice must be signed by the agent and contain the infor-
mation described in regulation 25(3)(a) to (d). (3) Notice to the Commissioner of the revocation by the agent of
the agent’s authority is effective— (a) if it complies with this regulation; and (b) when it is received by the Commissioner.
22
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 4 r 26
Regulation 25A: inserted, on 29 April 2013, by regulation 8 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
Part 4 Commissioner’s control of proceedings
Case management 26 Commissioner may require parties to attend case
management conference (1) At any stage in a proceeding, the Commissioner may, for the
purpose of securing the just, speedy, and inexpensive deter- mination of the proceeding,— (a) require the parties to attend a case management confer-
ence to review the proceeding and the steps that have been or must still be taken; and
(b) give directions at the case management conference that are consistent with the Act and these regulations.
(1A) Without limiting the generality of the directions that may be given under subclause (1)(b), the Commissioner may— (a) fix the time by which a step in the proceeding must be
taken; and (b) specify the steps that must be taken to prepare the pro-
ceeding for a hearing; and (c) direct how the hearing of the proceeding is to be con-
ducted; and (d) in accordance with regulation 35C, require parties to
use their best endeavours to agree on how confidential information is to be treated.
(2) The Commissioner must give each party notice of the confer- ence at least 10 working days before the conference.
(3) The parties may attend in person or by a telecommunication link that is acceptable to the Commissioner. Regulation 26(1): replaced, on 29 April 2013, by regulation 9 of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 26(1A): inserted, on 29 April 2013, by regulation 9 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
23
Part 4 r 27 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
27 Parties must comply with Commissioner’s directions at case management conference
(1) All parties to a proceeding must comply with the directions given by the Commissioner at a case management conference.
(2) If a party (party A) persistently or repeatedly fails to com- ply with a direction given by the Commissioner at a case management conference (persistent or repeated non-com- pliance),— (a) the Commissioner must, as soon as practicable,—
(i) request party A to provide an explanation for the party’s persistent or repeated non-compliance to the Commissioner and to the opposite party within a time specified by the Commissioner; and
(ii) in that request, advise party A of the effect of subclause (5); and
(b) the opposite party may provide comments on the ex- planation to the Commissioner within a time specified by the Commissioner; and
(c) after considering the explanation (if any) and comments from the opposite party (if any), the Commissioner must— (i) consider whether party A has a reasonable excuse
for the party’s persistent or repeated non-compli- ance; and
(ii) notify both parties of the decision that the Com- missioner intends to make.
(3) The notification referred to in subclause (2)(c)(ii) must also— (a) advise the parties that either party may require a hear-
ing; and (b) specify a period during which a party may require a
hearing, being a period of not less than 10 working days after the party has received the notification.
(4) The Commissionermust, as soon as practicable, hold a hearing if a party requires it, and in that case the Commissioner must make a decision only after holding a hearing.
(5) If the Commissioner’s decision is that party A has not satisfied the Commissioner that the party has a reasonable excuse for the party’s persistent or repeated non-compliance,—
24
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 4 r 29
(a) the Commissioner must notify both parties of the deci- sion as soon as practicable; and
(b) party A must not take any further step in the proceeding on and from the date of the notification.
(6) For the purpose of subclause (2), it is irrelevant that a failure by a party to comply with a direction is different in any way from a previous or subsequent failure by the party to comply with that direction. Regulation 27: replaced, on 29 April 2013, by regulation 10 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
Halt in proceedings 28 Commissioner may halt proceeding (1) The Commissioner may halt a proceeding, if the Commis-
sioner thinks it appropriate, on the application of a party or on the Commissioner’s own initiative.
(2) The Commissioner may halt the proceeding for the period and on the terms and conditions that the Commissioner thinks ap- propriate, but must not halt the proceeding for more than 6 months.
(3) The Commissioner may halt the proceeding for further periods, but on each occasion for no more than 6 months.
(4) The Commissioner may at any stage, while the proceeding is halted, recommence the proceeding.
Parties 29 Substitution of parties (1) A notice to the Commissioner by a person (S) claiming to be
substituted as an applicant under section 192 of the Act or an opponent under section 193, as the case may be, must include the following information: (a) S’s name and address for service: (b) if S has an agent, the agent’s name: (c) the nature of the application or notice of opposition to
which the claim for substitution relates: (d) the application or registration number or numbers: (e) a statement describing how the right or interest on
which S relies for substitution is vested in S.
25
Part 4 r 30 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(2) The notice must be signed by S. Regulation 29(1)(d): replaced, on 10 December 2012, by regulation 15 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
30 Intervention by third party (1) The Commissioner may allow a third party (T) who is not
the owner of the trade mark in question, and who satisfies the Commissioner that T has a sufficient interest, to intervene in a proceeding for— (a) rectification; or (b) revocation; or (c) a declaration of invalidity; or (d) cancellation.
(2) T must apply to intervene by filing with the Commissioner a notice that contains the following information: (a) T’s name and address for service: (b) if T has an agent, the agent’s name: (c) the nature of the application to which T’s claim for inter-
vention relates: (d) the application or registration number or numbers: (e) a statement describing T’s interest in the proceeding.
(3) The notice must be signed by T. (4) The Commissioner may allow T to intervene on the terms and
conditions (including an undertaking as to costs) that the Com- missioner thinks appropriate. Regulation 30(2)(d): replaced, on 10 December 2012, by regulation 16 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Production of documents 31 Commissioner may require production of documents (1) At any stage in a proceeding under the Act or these regulations,
the Commissioner may require a party by notice in writing or by direction made at a case management conference to do either of the following things within a time specified by the Commissioner: (a) file copies of documents with the Commissioner: (b) provide other parties to the proceeding with copies of
documents.
26
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 4 r 31
(2) The Commissioner may give a notice or make a direction under subclause (1) on the Commissioner’s own initiative or on the application of any party to the proceeding.
(3) If a party (party A) persistently or repeatedly fails to com- ply with a notice given or direction made by the Commis- sioner under subclause (1) (persistent or repeated non-com- pliance),— (a) the Commissioner must, as soon as practicable,—
(i) request party A to provide an explanation for the party’s persistent or repeated non-compliance to the Commissioner and to the opposite party within a time specified by the Commissioner; and
(ii) in that request, advise party A of the effect of subclause (6); and
(b) the opposite party may provide comments on the ex- planation to the Commissioner within a time specified by the Commissioner; and
(c) after considering the explanation (if any) and comments from the opposite party (if any), the Commissioner must— (i) consider whether party A has a reasonable excuse
for the party’s persistent or repeated non-compli- ance; and
(ii) notify both parties of the decision that the Com- missioner intends to make.
(4) The notification referred to in subclause (3)(c)(ii) must also— (a) advise the parties that either party may require a hear-
ing; and (b) specify a period during which a party may require a
hearing, being a period of not less than 10 working days after the party has received the notification.
(5) The Commissionermust, as soon as practicable, hold a hearing if a party requires it, and in that case, the Commissioner must make a decision only after holding a hearing.
(6) If the Commissioner’s decision is that party A has not satisfied the Commissioner that the party has a reasonable excuse for the party’s persistent or repeated non-compliance,— (a) the Commissioner must notify both parties of the deci-
sion as soon as practicable; and
27
Part 4 r 31A Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(b) party A must not take any further step in the proceeding on and from the date of the notification.
(7) For the purpose of subclause (3), it is irrelevant that a failure by a party to comply with a notice or direction is different in any way from a previous or subsequent failure by the party to comply with that notice or direction. Regulation 31(1): amended, on 29 April 2013, by regulation 11(1) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 31(3): inserted, on 29 April 2013, by regulation 11(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 31(4): inserted, on 29 April 2013, by regulation 11(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 31(5): inserted, on 29 April 2013, by regulation 11(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 31(6): inserted, on 29 April 2013, by regulation 11(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 31(7): inserted, on 29 April 2013, by regulation 11(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
Consolidation of proceedings Heading: inserted, on 29 April 2013, by regulation 12 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
31A Commissioner may consolidate proceedings The Commissioner may require that 2 or more proceedings be consolidated on terms that the Commissioner thinks just, or may require them to be heard at the same time or one after the other, or may require any of them to be halted until after the determination of any other of them, if the Commissioner is satisfied— (a) that a common question of law or fact arises in both or
all of them; or (b) that the proceedings relate to—
(i) identical trade marks; or (ii) trade marks with the same, or related, owners; or
(c) that for any other reason it is desirable to require con- solidation of proceedings under this regulation.
Compare: 1908 No 89 Schedule 2 rr 10.12, 10.13 Regulation 31A: inserted, on 29April 2013, by regulation 12 of the TradeMarks Amendment Regulations 2013 (SR 2013/49).
28
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 4 r 34
Extension of time 32 Commissioner may extend time (1) The Commissioner may, except where these regulations stipu-
late that time must not be extended, extend the time specified by these regulations for a step to be taken for a period not ex- ceeding 3 months if the Commissioner is satisfied that the ex- tension is reasonable in the circumstances.
(2) The Commissioner may, except where these regulations stipu- late that time must not be extended, extend the time speci- fied by these regulations for a step to be taken for any period (whether or not in addition to the period specified in subclause (1)) specified by the Commissioner if the Commissioner is satisfied that there are genuine and exceptional circumstances that justify the extension.
(3) In extending the time for a step to be taken, the Commissioner may stipulate the terms and conditions on which the extension is granted.
(4) If more than 1 extension is granted under subclause (1) in re- lation to a step to be taken, the total period of those extensions must not exceed 3 months. Regulation 32: replaced, on 29 April 2013, by regulation 13 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
Evidence 33 Party filing evidence must copy evidence to opposite party
A party who files evidence with the Commissioner under the Act or these regulations must, as soon as practicable, send a copy of the evidence to the opposite party and any party inter- vening.
34 Evidence out of time (1) This regulation and regulation 35 apply to the following pro-
ceedings: (a) an opposition to registration of a trade mark: (b) an application for rectification of the register: (c) an application for revocation of the registration of a
trade mark:
29
Part 4 r 35 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(d) an application for a declaration of the invalidity of the registration of a trade mark:
(e) an application for cancellation or alteration of a regis- tration.
(2) A party to a proceeding must not file evidence after the pre- scribed time unless the party has applied to the Commissioner for permission to file it and the Commissioner allows it.
(3) The Commissioner may allow the evidence to be filed only if— (a) the Commissioner considers that there are genuine
and exceptional circumstances that justify filing the evidence; or
(b) the evidence could not have been filed earlier. (4) In this regulation, prescribed timemeans, in relation to a pro-
ceeding to which this regulation applies, the time prescribed in these regulations by which the evidence or type of evidence must be filed. Regulation 34: replaced, on 29 April 2013, by regulation 14 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
35 Application for permission to file evidence out of time (1) The application for permission to file evidence out of time
must— (a) be in writing; and (b) be signed by the party applying for permission (P); and (c) contain the information in subclause (2).
(2) The application must contain the following information: (a) P’s name and address for service: (b) if P has an agent, the agent’s name: (c) the nature of the evidence and whether it is evidence in
chief or evidence strictly in reply: (d) an explanation why the evidence could not have been
filed earlier: (e) any other ground or grounds for making the application.
(3) The Commissioner must notify the opposite party of the ap- plication, and the opposite party may make submissions to the Commissioner within the time specified by the Commissioner.
(4) The Commissioner must notify the parties of the decision that the Commissioner intends to make on the application.
30
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 4 r 35B
(5) The notification must— (a) specify the ground or grounds on which the Commis-
sioner intends to reject or accept the application; and (b) advise the parties that either party may require a hear-
ing; and (c) specify a period of not less than 1 month after the date
of notification for a party to require a hearing; and (d) advise the parties that the Commissioner will decide the
application at the end of that period if a party has not required a hearing.
(6) The Commissionermust, as soon as practicable, hold a hearing if the applicant requests it unless regulation 122(3) applies. Regulation 35(2)(c): amended, on 29 April 2013, by regulation 15(1) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 35(6): replaced, on 29 April 2013, by regulation 15(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
35A Right to file evidence in reply if evidence in chief permitted out of time If a party is permitted under regulations 34 and 35 to file evi- dence in chief out of time, the opposite party may file evidence strictly in reply within 1 month after the date of being notified by the Commissioner that the evidence out of time will be ad- mitted in the proceeding. Regulation 35A: inserted, on 29April 2013, by regulation 16 of the TradeMarks Amendment Regulations 2013 (SR 2013/49).
35B Evidence from another proceeding (1) The Commissioner may in a proceeding, at the request of a
party to the proceeding, accept evidence that the party has filed with the Commissioner in an earlier or existing proceeding.
(2) Any evidence that is accepted for filing under subclause (1) does not have to comply with regulation 5(c). Regulation 35B: inserted, on 29April 2013, by regulation 16 of the TradeMarks Amendment Regulations 2013 (SR 2013/49).
31
Part 4 r 35C Trade Marks Regulations 2003 Reprinted as at 29 April 2013
35C Commissioner may require parties to use best endeavours to reach confidentiality agreement The Commissioner may require the parties to a proceeding to use their best endeavours— (a) to agree on how evidence that is considered confiden-
tial (whether by the party filing the evidence or by the Commissioner) is to be treated in the proceeding; and
(b) to reach an agreement within a time specified by the Commissioner.
Regulation 35C: inserted, on 29April 2013, by regulation 16 of the TradeMarks Amendment Regulations 2013 (SR 2013/49).
Vexatious applications 36 Vexatious applications (1) This regulation applies to the following applications:
(a) an application for revocation of the registration of a trade mark:
(b) an application for a declaration of the invalidity of the registration of a trade mark.
(2) If the Commissioner considers that the application is vex- atious, the Commissioner must, as soon as practicable, notify the applicant that the Commissioner intends to refuse the application as vexatious.
(3) The notification must— (a) specify the grounds on which the Commissioner con-
siders that the application is vexatious; and (b) advise the applicant that the applicant may require a
hearing; and (c) specify a period of not less than 10 working days after
the applicant has received the notification for the appli- cant to require a hearing; and
(d) advise the applicant that the Commissioner will refuse the application at the end of that period if the applicant has not required a hearing.
(4) The Commissionermust, as soon as practicable, hold a hearing if a party requires it, unless regulation 122(3) applies. Regulation 36(4): replaced, on 29 April 2013, by regulation 17 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
32
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 5 r 40
Part 5 Application for preliminary advice or for
search of register 37 Application for preliminary advice or for search of
register An application for preliminary advice under section 16 of the Act or for search of the register must— (a) be in writing; and (b) be accompanied by the prescribed fee; and (c) contain the information specified in regulation 38.
38 Information required for application for preliminary advice or search of register An application for preliminary advice or a search of the regis- ter must contain the following information: (a) the applicant’s name and communication address: (b) a clear representation of the trade mark: (c) a statement of the goods or services and the class of
goods or services for which it is proposed to register the trade mark:
(d) a transliteration of any foreign characters in the trade mark:
(e) a translation of any foreign words in the trade mark. Regulation 38(c): amended, on 29 April 2013, by regulation 18 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
39 Application for preliminary advice or search of register for goods and services in more than 1 class An applicant may apply in the same application for prelimin- ary advice or a search of the register for a trade mark for goods and services in more than 1 class, but in that case a separate fee is payable for each class.
40 Refund of fee if identical or similar trade mark subsequently identified An applicant for registration of a trade mark is entitled to a refund of the application fee paid if—
33
Part 6 r 41 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(a) the applicant, relying on the result of a search, applied for registration of a trade mark within 3 months of re- ceiving the search result; and
(b) a subsequent notification of non-compliance discloses an identical or similar mark on the register that should have been identified in the search result; and
(c) the applicant withdraws the application for registration.
Part 6 Application for registration of trade mark
Requirements for application 41 Mandatory requirements for application for registration (1) An application for registration of a trademark that is submitted
for filing must— (a) be accompanied by the prescribed fee (or in the case
of a multi-class application, the prescribed fee for each class); and
(b) contain the information specified in regulation 42. (2) An application that does not comply with subclause (1) is in-
valid and must not be given a filing date. (3) An application that complies with subclause (1) must be given
a filing date and may be examined.
42 Information required in application for registration on filing
(1) The application must contain the following information when it is filed: (a) the applicant’s name and address or, in the case of joint
applicants, the name and address of each applicant un- less regulation 13(2) applies:
(b) a clear representation of the trade mark: (c) if the application is for registration of a series of trade
marks, a clear representation of each trade mark in the series:
(d) the goods and services for which registration is re- quired.
34
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 6 r 44
(2) The information provided under subclause 1(a) relating to the applicant’s address may also contain any or all of the follow- ing: (a) a telephone number: (b) a fax number: (c) an email address: (d) an alternative address.
(3) In this regulation, address means a postal address that is suf- ficiently detailed to enable the Commissioner to contact the applicant at that address. Regulation 42(1)(a): replaced, on 10 December 2012, by regulation 17(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 42(2): inserted, on 10 December 2012, by regulation 17(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 42(3): inserted, on 10 December 2012, by regulation 17(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
43 Additional classes may be added until acceptance (1) An applicant for registration of a trade mark may, until the
time the application is accepted, apply to the Commissioner for a class or classes to be added.
(2) The Commissioner may allow the addition of a class if— (a) the application is accompanied by the fee prescribed for
an application to register in 1 class; and (b) the goods or services to which the additional class or
classes relate are within the original specification. (3) The Commissioner must not allow an application for addition
of a class if the applicant has previously deleted the goods or services to which the additional class relates from the applica- tion for registration. Regulation 43: replaced, on 10 December 2012, by regulation 18 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
44 Information that must be supplied before acceptance of application An applicant must supply the following information before the application can be accepted, and may supply it after filing the application: (a) the applicant’s address for service; and
35
Part 6 r 45 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(b) whether the application is for a certification or a collect- ive trade mark; and
(c) the class or classes of the edition of the Nice Classifi- cation in effect at the time of the application in which registration is sought; and
(d) in the case of a certification trade mark, the regulations governing the use of the trade mark approved by the Commissioner; and
(e) a transliteration of any foreign characters in the trade mark; and
(f) a translation of any foreign words in the trade mark; and (g) if the trade mark is a colour or colours, a description ac-
ceptable to the Commissioner of the colour or colours; and
(h) if the trade mark is limited as to colour, a description acceptable to the Commissioner of the colour or colours in the trade mark; and
(i) if the applicant hasmade a claim for convention priority, the information specified in regulation 47; and
(j) a statement by the applicant that the trade mark is being used or is proposed to be used.
Regulation 44(a): replaced, on 10December 2012, by regulation 19 of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 44(c): replaced, on 16 September 2011, by section 28(3) of the Trade Marks Amendment Act 2011 (2011 No 71).
45 Commissioner may request further information The Commissioner may request further information from an applicant that will assist in the examination of the application.
Claim for convention priority 46 Claim for convention priority must be made when
application filed (1) A claim for convention priority on the basis of an application
for registration in a convention country must be made within 2 working days after the application for registration in New Zealand is filed.
(2) The Commissioner must not extend the time for making a claim for convention priority.
36
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 6 r 48
(3) A claim for convention priority made more than 2 working days after the application is filed must not be accepted.
47 Information required for claim for convention priority (1) A claim for convention priority must include the following
information: (a) the date of the application from which priority is
claimed: (b) the country in which the application was made: (c) the goods and services to which the claim relates: (d) if the application in New Zealand is an application for
registration of a series of trade marks, a statement spe- cifying to which of the marks in the series the claim for convention priority relates.
(2) The Commissioner may require an applicant to file, within the time specified by the Commissioner, a certified copy of the convention document.
(3) The Commissioner may refuse an applicant convention pri- ority if the applicant does not comply with a request by the Commissioner under subclause (2).
Registration of trade mark including name or description that may vary in use
48 Registration of trade mark including name or description that may vary in use
(1) The Commissioner may register a trade mark that includes the name or description of goods and services for those and other goods and services, if the name or description may vary in use.
(2) The Commissioner may require the applicant to undertake that the name or description will be varied if used for goods and services covered by the specification that are not the named or described goods and services.
(3) Any undertaking must be entered on the register. (4) If the applicant does not give an undertaking as required, the
Commissioner may refuse to register the trade mark for goods and services that are not the named or described goods and services.
37
Part 6 r 49 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Regulation 48(2): amended, on 10 December 2012, by regulation 20(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 48(3): amended, on 10 December 2012, by regulation 20(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Division 49 Division of trade mark application
An applicant for registration of a trade mark may apply for division from the application of— (a) part of a series of trade marks, in the case of a series
application; or (b) classes within an application; or (c) specific goods or services within an application.
50 Application for division An application for division must— (a) be in writing; and (b) contain the information set out in regulation 51.
51 Information required for application for division An application for division must contain the following infor- mation: (a) the applicant’s name and address: (b) if the applicant has an agent, the agent’s name: (c) the initial application number of the application for
registration: (d) in the case of division of a series of marks, the part of
the series to be divided out: (e) in the case of division of classes, a list of the classes to
be divided out: (f) in the case of division of goods or services, a list of the
goods or services to be divided out: (g) if a notice of opposition to the application for registra-
tion has been filed with the Commissioner, a statement that the opponent has consented to the application for division.
38
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 6 r 55
52 Effect of division If the Commissioner allows an application for division, the part that is divided out— (a) is independent of the original application for registra-
tion: (b) retains the filing date of the original application for
registration.
53 Division instead of striking out An applicant for registration of a trade mark may, instead of striking out items from the specification, apply for division in respect of those items, provided that there is no outstanding application fee for the class or classes in which the items di- vided out are to be included.
Merger 54 When merger is allowed (1) An applicant for registration of a trade mark, or an owner of a
trade mark, as the case may be, may apply for the merger of— (a) 2 or more applications; or (b) 2 or more registrations.
(2) TheCommissionermaymerge the applications or registrations if they— (a) are for the same trade mark; and (b) have the same filing dates and, if applicable, same con-
vention priority dates; and (c) have the same status, for example, accepted for regis-
tration, or registered; and (d) are in the name of the same applicant or owner; and (e) are classified according to—
(i) the same schedule of the Trade Marks Regula- tions 1954; or
(ii) the Nice Classification; or (iii) the same previous edition of the Nice Classifica-
tion, as the case may be.
55 Application for merger An application for merger must—
39
Part 6 r 56 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(a) be in writing; and (b) contain the information specified in regulation 56.
56 Information required for application for merger An application for merger must contain the following infor- mation: (a) the applicant’s name and address for service: (b) if the applicant has an agent, the agent’s name: (c) the number of each application or registration sought to
be merged.
Application for registration of certification trade mark
57 Requirements for certification trade mark application (1) An application for registration of a certification trade mark
must comply with the requirements of regulations 41, 42, and 44.
(2) Within 6 months after the application is filed, the applicant must file, in a form acceptable to the Commissioner, draft regu- lations governing the use of the trade mark.
58 Applicant may modify documents After the documents referred to in regulation 57(2) have been filed and until the application for registration is accepted, the applicant maymodify the documents in response to any advice the Commissioner may give as to their suitability. Regulation 58: replaced, on 10 December 2012, by regulation 21 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Application for registration of collective trade mark
59 Requirements for collective trade mark application An application for registration of a collective trade mark must— (a) comply with the requirements of regulations 41, 42, and
44; and (b) contain a declaration that the applicant is a collective
association as defined in section 5(1) of the Act.
40
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 6 r 60
Application for registration when owner or applicant dies
60 Application for registration without production of letters of administration or probate
(1) An application under section 52(1) (which in this regulation is called the section 52 application) of the Act must— (a) be in writing: and (b) contain the information specified in subclause (2); and (c) be signed by the applicant.
(2) The section 52 application must contain the following infor- mation: (a) the name and communication address of the applicant: (b) if the applicant has an agent, the agent’s name and ad-
dress for service: (c) the name of the deceased owner or deceased applicant
for registration: (d) if that person had an agent, the agent’s name and address
for service: (e) [Revoked] (f) in the case of a registered trade mark, the registration
number of each trade mark to which the section 52 ap- plication relates:
(g) in the case of an application for registration of a trade mark by a deceased applicant, the number of the appli- cation:
(h) a statutory declaration by the applicant that— (i) the owner or applicant for registration is dead;
and (ii) the applicant is a qualified person.
(3) Before registering the applicant as the owner of the trademark, the Commissioner may require the applicant to provide further evidence that the Commissioner considers necessary. Regulation 60(2)(e): revoked, on 10 December 2012, by regulation 22 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
41
Part 7 r 61 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Part 7 Procedure after application for
registration filed Non-compliance
61 Deadline for response to notice of non-compliance (1) In a notice of non-compliance issued under section 41 of the
Act, the Commissioner may specify a deadline of not less than 12 months after the application for registration was filed for— (a) responding to the notice; or (b) amending the application.
(2) After each response or amendment by the applicant, the Com- missioner may issue a further notice if the application still does not comply with the requirements of the Act, and on each oc- casion may extend the deadline specified under subclause (1).
62 Applicant may request extension of time to comply (1) Before the deadline for a response to a notice of non-compli-
ance has expired, the applicant for registration may apply to the Commissioner for an extension.
(2) The Commissioner may allow an extension under this regula- tion, in the Commissioner’s discretion, and may allow subse- quent extensions.
(3) The Commissioner must not allow an extension under this regulation if the application for extension is made after the deadline has expired.
(3A) [Revoked] (4) A request by an applicant for a hearing if the Commissioner
refuses an extension must be made within 10 working days after the Commissioner notifies the applicant of the refusal. Regulation 62(2): amended, on 10 December 2012, by regulation 23(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 62(3): amended, on 10 December 2012, by regulation 23(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 62(3A): revoked, on 29 April 2013, by regulation 19 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
42
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 7 r 64
62A Applicant for registration of trade mark entitled to 1 extension in certain circumstances
(1) This regulation applies to any deadline for doing anything under these regulations in relation to— (a) an application for registration of a trade mark, up until
the application is accepted: (b) a proposal under regulation 71 to revoke the acceptance
of a trade mark. (2) If a deadline to which this regulation applies has expired, an
applicant is entitled to an extension of not more than 2 months after that expiry if the applicant— (a) applies to the Commissioner, within 2 months after that
expiry, for an extension of time to do the thing; and (b) at the time of application, does the thing.
(3) An applicant is entitled to only 1 extension under this regula- tion. Regulation 62A: inserted, on 10 December 2012, by regulation 24 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
63 Applicant must notify Commissioner of related proceeding
(1) An applicant for registration of a trade mark who has been issued with a notice of non-compliance must notify the Com- missioner if the application is awaiting the outcome of— (a) an opposition proceeding in respect of a prior applica-
tion; or (b) cancellation, revocation, or invalidity proceedings in re-
spect of a prior registration. (2) The applicant must notify the Commissioner before the expiry
of the date specified in the notice of non-compliance.
64 Applicant must notify Commissioner of outcome of related proceeding
(1) An applicant for registration of a trade mark who has notified the Commissioner under regulation 63 must, as soon as prac- ticable, notify the Commissioner of the outcome of the pro- ceeding.
43
Part 7 r 65 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(2) On notice of the outcome of the proceeding, the Commissioner must extend the deadline for compliance by a period that the Commissioner considers reasonable.
Withdrawal of application for registration 65 Notification of withdrawal of application for registration (1) An applicant for registration of a trade mark may withdraw the
application by notifying the Commissioner in writing. (2) The notification of withdrawal must contain the following in-
formation: (a) the applicant’s name: (b) if the applicant has an agent, the agent’s name: (c) [Revoked] (d) the application number.
(3) The notification must be signed by the applicant. Regulation 65(2)(c): revoked, on 10 December 2012, by regulation 25 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Alteration of application for registration 66 Request for alteration of application (1) A request under section 37 of the Act by an applicant for the
registration of a trade mark for the alteration of the application must— (a) be in writing; and (b) contain the information set out in subclause (2); and (c) be signed by the applicant.
(2) The request for alteration must contain the following informa- tion: (a) the applicant’s name: (b) if the applicant has an agent, the agent’s name: (c) [Revoked] (d) the application number: (e) the correction to be made to the application. Regulation 66(1)(b): amended, on 10 December 2012, by regulation 26(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 66(2)(c): revoked, on 10 December 2012, by regulation 26(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
44
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 7 r 69
67 Commissioner must notify applicant of intention to reject alteration
(1) The Commissioner must notify the applicant if the Commis- sioner intends to reject the request for alteration on the ground that, in the Commissioner’s opinion, the alteration materially alters the meaning or scope of the application.
(2) The notification must— (a) specify the ground or grounds for the Commissioner’s
opinion; and (b) advise the applicant that the applicant may require a
hearing; and (c) specify a period of not less than 1 month after the date
of the notification for the applicant to require a hearing; and
(d) advise the applicant that the Commissioner will, subject to any extension allowed under regulation 62A, reject the request at the end of that period if the applicant has not required a hearing.
Regulation 67(2)(d): amended, on 10 December 2012, by regulation 27 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
68 Commissioner must hold hearing TheCommissionermust, as soon as practicable, hold a hearing if the applicant requires it unless regulation 122(3) applies. Regulation 68: replaced, on 29 April 2013, by regulation 20 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
Rejection of application for registration 69 Commissioner must notify applicant of intention to reject
application (1) The Commissioner must notify the applicant for registration
of a trade mark if the Commissioner proposes to reject the application under section 43 of the Act.
(2) The notification must— (a) specify the ground or grounds for rejection; and (b) advise the applicant that the applicant may require a
hearing; and
45
Part 7 r 70 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(c) specify a period of not less than 1 month after the ap- plicant has received the notification for the applicant to require a hearing; and
(d) advise the applicant that the Commissioner will, subject to any extension allowed under regulation 62A, reject the application at the end of that period if the applicant has not required a hearing.
Regulation 69(2)(d): amended, on 10 December 2012, by regulation 28 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
70 Commissioner must hold hearing TheCommissionermust, as soon as practicable, hold a hearing if the applicant requires it unless regulation 122(3) applies. Regulation 70: replaced, on 29 April 2013, by regulation 21 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
Revocation of acceptance 71 Commissioner must notify applicant of intention to
revoke acceptance (1) The Commissioner must notify the applicant for registration
of a trade mark if the Commissioner proposes to revoke ac- ceptance of the application under section 42 of the Act.
(2) The notification must— (a) specify the ground or grounds for revocation; and (b) advise the applicant that the applicant may require a
hearing; and (c) specify a period of not less than 1 month after the ap-
plicant has received the notification for the applicant to require a hearing; and
(d) advise the applicant that the Commissioner will, subject to any extension allowed under regulation 62A, revoke acceptance at the end of that period if the applicant has not required a hearing.
Regulation 71(2)(d): amended, on 29 April 2013, by regulation 22 of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 71(2)(d): amended, on 10 December 2012, by regulation 29 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
46
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 8 r 74
72 Commissioner must hold hearing TheCommissionermust, as soon as practicable, hold a hearing if the applicant requires it unless regulation 122(3) applies. Regulation 72: replaced, on 29 April 2013, by regulation 23 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
Part 8 Opposition to application for registration
Notice of opposition 73 Requirements for notice of opposition
A notice of opposition to an application for registration of a trade mark under section 47 of the Act must— (a) be in writing; and (b) be accompanied by the prescribed fee; and (c) contain the information specified in regulation 74; and (d) be signed by the opponent.
74 Information required in notice of opposition A notice of opposition to an application for registration of a trade mark must contain the following information: (a) the name and address for service of the opponent: (b) if the opponent has an agent, the agent’s name: (c) [Revoked] (d) the number of the application: (e) the class or classes, or the goods or services, to which
the opposition relates: (f) the ground or grounds of opposition and the provisions
of the Act to which those grounds relate: (g) if a ground of opposition relates to section 25 of the Act,
the trade mark numbers of the earlier trade marks. Regulation 74(c): revoked, on 10 December 2012, by regulation 30(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 74(f): replaced, on 10 December 2012, by regulation 30(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 74(g): inserted, on 10 December 2012, by regulation 30(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
47
Part 8 r 75 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
75 Time for filing notice of opposition (1) A party who opposes an application for registration of a trade
mark must file a notice of opposition with the Commissioner within 3 months after the date when acceptance of registration was first advertised.
(2) The Commissioner may, if requested, extend the deadline for filing a notice of opposition— (a) by up to 1 month, without the applicant’s consent; and (b) by up to 2 months, with the applicant’s consent.
(3) The Commissioner must not extend the deadline if the request for extension is received after the deadline has expired. Regulation 75(3): replaced, on 29 April 2013, by regulation 24 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
76 Notice of opposition sent in time if all parties agree A notice of opposition that has been sent to the Commissioner within 6 months after the application for registration in ques- tion was filed is deemed to have been sent within the time for sending the notice if the applicant and the opponent each con- sent.
77 Commissioner must send copy of notice to applicant for registration The Commissioner must, as soon as practicable after a notice of opposition is filed, send a copy of the notice to the applicant for registration.
78 Commissioner must notify each opponent that notice of opposition filed If an application for registration is opposed by more than 1 opponent, the Commissioner must, as soon as practicable after each notice of opposition is filed, notify each opponent that the notice has been filed.
Counter-statement 79 Time for sending counter-statement
An applicant for registration to whom a notice of opposition has been sent must file a counter-statement to the notice with
48
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 8 r 82
the Commissioner within 2 months after the notice was sent to the applicant. Regulation 79: amended, on 10 December 2012, by regulation 31 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
80 Information required in counter-statement (1) A counter-statement must contain the following information:
(a) the applicant’s name and address for service: (b) if the applicant has an agent, the agent’s name: (c) a response to the opponent’s grounds of opposition, by
admitting, denying, or claiming lack of knowledge of, each assertion made in the grounds of opposition:
(d) a brief statement of the grounds on which the applicant relies in support of the application for registration.
(2) The counter-statement must be signed by the applicant.
81 Commissioner must send copy of counter-statement to opponent The Commissioner must, as soon as practicable after a counter-statement is filed, send a copy of the counter-state- ment to the opponent.
Evidence 82 Opponent must file evidence (1) Within 2 months after a copy of the counter-statement is sent
to the opponent (O), O must— (a) file evidence in support of the opposition; or (b) notify the Commissioner that O does not intend to file
evidence; or (c) notify the Commissioner that O withdraws the applica-
tion. (2) The Commissioner must notify the applicant as soon as prac-
ticable after O has taken one of the steps under subclause (1)(b) or (c). Regulation 82(1): amended, on 10 December 2012, by regulation 32 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
49
Part 8 r 83 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
83 Discontinuance of opposition An opponent (O) discontinues opposition if— (a) O does not within the applicable deadline file evidence
or notify the Commissioner that O does not intend to file evidence; or
(b) O notifies the Commissioner that O withdraws the op- position.
84 Applicant may file evidence The applicant may file evidence in support of the application within 2 months after receiving a copy of— (a) the evidence of the opponent (O); or (b) O’s notice to the Commissioner that O does not intend
to file evidence in support of O’s opposition.
85 Evidence in reply An opponent to an application for registration may, if the ap- plicant has filed evidence, file evidence strictly in reply within 1 month after the opponent has received a copy of the appli- cant’s evidence.
Part 9 Rectification
86 Application for rectification by Commissioner (1) An application to the Commissioner for rectification of the
register under section 76 of the Act must— (a) be in writing; and (b) contain the information specified in regulation 87; and (c) be signed by the applicant.
(2) The Commissioner must, as soon as practicable, send a copy to the owner of the registered trade mark of an application by another person for rectification.
87 Information required for application for rectification An application for rectification must contain the following in- formation: (a) the applicant’s name and address for service: (b) if the applicant has an agent, the agent’s name:
50
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 9 r 89
(c) [Revoked] (d) the number of the registration of the trademark to which
the application for rectification relates: (e) the class or classes to which the application relates: (f) the extent to which rectification is sought: (g) the grounds for rectification and the provisions of the
Act to which those grounds relate: (h) in the case of an application by a person who is not the
owner of the trade mark, a statement of the basis on which the applicant claims to be a person who has an interest for the purposes of section 76(1) of the Act.
Regulation 87(c): revoked, on 10 December 2012, by regulation 33(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 87(g): amended, on 10 December 2012, by regulation 33(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Opposition to rectification 88 Owner may oppose rectification (1) The owner of a trade mark in respect of which another per-
son has applied for rectification may oppose the application by filing a counter-statement with the Commissioner within 2 months after being sent a copy of the application.
(2) If the owner does not file a counter-statement within 2 months, the Commissioner must determine the application on the docu- ments filed by the applicant. Regulation 88(1): amended, on 10 December 2012, by regulation 34 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
89 Requirements for counter-statement to application for rectification
(1) A counter-statement to an application for rectification must include the following information: (a) the owner’s name and address for service: (b) if the owner has an agent, the agent’s name: (c) a response to the applicant’s grounds for rectification,
by admitting, denying or claiming lack of knowledge of, each assertion made in the grounds for rectification:
(d) a brief statement of the facts on which the owner relies in support of the registration.
51
Part 9 r 90 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(2) The counter-statement must be signed by the owner. (3) The Commissioner must, as soon as practicable, send a copy
of the counter-statement to the applicant.
Evidence 90 Applicant for rectification must file evidence (1) Within 2 months after being sent a copy of the counter-state-
ment, the applicant (A) must— (a) file evidence in support of the application; or (b) notify the Commissioner that A does not intend to file
evidence; or (c) notify the Commissioner that A withdraws the applica-
tion. (2) The Commissioner must notify the owner as soon as practic-
able after A has taken one of the steps under subclause (1)(b) or (c). Regulation 90(1): amended, on 10 December 2012, by regulation 35 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
91 Discontinuance of application The applicant (A) discontinues the application if— (a) A does not within the applicable deadline file evidence
or notify the Commissioner that A does not intend to file evidence; or
(b) A notifies the Commissioner that A withdraws the ap- plication.
92 Owner may file evidence The owner may file evidence within 2 months after receiving a copy of— (a) the applicant’s evidence; or (b) the applicant’s notice to the Commissioner that the ap-
plicant does not intend to file evidence in support of the application.
52
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 10 r 95
93 Applicant’s evidence in reply An applicant for rectification may, if the owner has filed evi- dence, file evidence strictly in reply within 1 month after the applicant has received a copy of the owner’s evidence.
Part 10 Revocation
Application to Commissioner for revocation 94 Application to Commissioner for revocation (1) An application to the Commissioner for revocation of the
registration of a trade mark must— (a) be in writing; and (b) contain the information specified in regulation 95; and (c) be signed by the applicant.
(2) The Commissioner must, as soon as practicable, send a copy of the application to the owner of the trade mark.
95 Information required for application for revocation An application for revocation must contain the following in- formation: (a) the applicant’s name and address for service: (b) if the applicant has an agent, the agent’s name: (c) [Revoked] (d) the number of the registration of the trademark to which
the application for revocation relates: (e) the class or classes or goods or services to which the
application relates: (f) the grounds for revocation and the provisions of the Act
to which those grounds relate: (g) a statement of the basis on which the applicant claims to
be a person aggrieved for the purposes of section 65(1) of the Act.
Regulation 95(c): revoked, on 10 December 2012, by regulation 36(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 95(f): amended, on 10 December 2012, by regulation 36(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
53
Part 10 r 96 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Opposition to application for revocation for non-use
96 Owner or licensee may oppose revocation by filing counter-statement and evidence of use
(1) The owner or licensee of a trade mark that is the subject of an application for revocation for non-use may oppose the appli- cation by filing the following documents within 2 months after the owner or licensee has been sent the application: (a) a counter-statement that complies with regulation 97;
and (b) evidence of—
(i) the use of the mark; or (ii) special circumstances of the kind referred to in
section 66(2) of the Act. (2) If the owner or licensee does not, within the period specified,
file the counter-statement and, if applicable, evidence of use of the mark or of the special circumstances, the Commissioner must determine the application on the documents filed by the applicant.
(3) The Commissioner must, as soon as practicable, send a copy of the counter-statement and any supporting documents to the applicant. Regulation 96(1): amended, on 10 December 2012, by regulation 37 of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 96(2): replaced, on 29 April 2013, by regulation 25 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
97 Requirements for counter-statement to application for revocation for non-use
(1) A counter-statement to an application for revocation of a trade mark on grounds of non-use must contain the following infor- mation: (a) the name and address for service of the owner or li-
censee opposing the application: (b) if the owner or licensee has an agent, the agent’s name: (c) a response to the applicant’s grounds for revocation, by
admitting, denying, or claiming lack of knowledge of, each assertion made in the grounds for revocation:
54
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 10 r 99
(d) a brief statement of the facts on which the owner or licensee relies in support of continued registration:
(e) if non-use is due to special circumstances of the kind referred to in section 66(2) of the Act, a statement of those special circumstances.
(2) The notice must be signed by the owner or licensee opposing the application.
Evidence 98 Applicant for revocation for non-use must file evidence (1) Within 2 months after being sent a copy of the counter-state-
ment and the evidence of use of the trade mark or special cir- cumstances of the kind referred to in section 66(2) of the Act, the applicant (A) must— (a) file evidence in support of the application; or (b) notify the Commissioner that A does not intend to file
evidence; or (c) notify the Commissioner that A withdraws the applica-
tion. (2) The Commissioner must notify the owner or licensee opposing
the application as soon as practicable after A has taken one of the steps under subclause (1)(b) or (c).
(3) A discontinues the application if— (a) A does not within the applicable deadline file evidence
or notify the Commissioner that A does not intend to file evidence; or
(b) A notifies the Commissioner that A withdraws the ap- plication.
Regulation 98(1): amended, on 29 April 2013, by regulation 26 of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 98(1): amended, on 10 December 2012, by regulation 38 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
99 Owner or licensee may file evidence The owner or licensee opposing an application for revocation for non-use may, if the applicant has filed evidence in support of the application, file evidence in support of the registration within 2months after the owner or licensee has received a copy of the applicant’s evidence.
55
Part 10 r 100 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
100 Applicant may file evidence in reply The applicant for revocation for non-use may, if the owner or licensee has filed evidence in support of the registration, file evidence strictly in reply within 1 month after the applicant has received a copy of the evidence in support of the owner or licensee.
Opposition to application for revocation on grounds other than non-use
101 Owner or licensee may oppose revocation by filing counter-statement
(1) The owner or licensee of a trade mark that is the subject of an application for revocation on grounds other than non-use may oppose the application by filing, within 2 months after the application is sent by the Commissioner, a counter-statement that complies with regulation 102.
(2) The Commissioner must, as soon as practicable, send a copy of the counter-statement to the applicant.
(3) If the owner or licensee does not, within 2 months after the owner or licensee received the application, file the counter- statement the Commissioner must determine the application on the documents filed by the applicant. Regulation 101(1): amended, on 29 April 2013, by regulation 27 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
102 Requirements for counter-statement to application for revocation on grounds other than non-use
(1) A counter-statement to an application for revocation of a trade mark on grounds other than non-use must contain the follow- ing information: (a) the name and address for service of the owner or li-
censee opposing the application: (b) if the owner or licensee has an agent, the agent’s name: (c) a response to the applicant’s grounds for revocation, by
admitting, denying, or claiming lack of knowledge of, each assertion made in the grounds for revocation:
(d) a brief statement of the facts on which the owner or licensee relies in support of continued registration.
56
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 10 r 105
(2) The notice must be signed by the owner or licensee opposing the application.
Evidence 103 Applicant for revocation on grounds other than non-use
must file evidence (1) Within 2 months after being sent a copy of the counter-state-
ment, the applicant (A) must— (a) file evidence in support of the application; or (b) notify the Commissioner that A does not intend to file
evidence; or (c) notify the Commissioner that A withdraws the applica-
tion. (2) The Commissioner must notify the owner or licensee opposing
the application as soon as practicable after A has taken one of the steps under subclause (1)(b) or (c).
(3) A discontinues the application if— (a) A does not within the applicable deadline file evidence
or notify the Commissioner that A does not intend to file evidence; or
(b) A notifies the Commissioner that A withdraws the ap- plication.
Regulation 103(1): amended, on 10 December 2012, by regulation 39 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
104 Person opposing may file evidence in support of registration The owner or licensee opposing an application for revocation on grounds other than non-use may, if the applicant has filed evidence in support of the application, file evidence in support of registration within 2 months after the owner or licensee has received a copy of the applicant’s evidence.
105 Applicant may file evidence in reply The applicant for revocation on grounds other than non-use may, if the owner or licensee opposing has filed evidence in reply, file evidence strictly in reply within 1 month after the
57
Part 11 r 106 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
applicant has received a copy of the evidence in support of the owner or licensee.
Part 11 Invalidity
Application to Commissioner for declaration for invalidity
106 Application to Commissioner for declaration of invalidity (1) An application to the Commissioner for a declaration that the
registration of a trade mark is invalid must— (a) be in writing; and (b) be accompanied by the prescribed fee; and (c) contain the information specified in regulation 107; and (d) be signed by the applicant.
(2) The Commissioner must, as soon as practicable, send a copy of the application to the owner of the trade mark.
107 Information required for application for declaration of invalidity An application for a declaration of invalidity must contain the following information: (a) the applicant’s name and address for service: (b) if the applicant has an agent, the agent’s name: (c) [Revoked] (d) the number of the registration of the trademark to which
the application for a declaration of invalidity relates: (e) the class or classes or goods or services to which the
application relates: (f) the grounds for a declaration of invalidity and the pro-
visions of the Act to which those grounds relate: (g) a statement of the basis on which the applicant claims to
be a person aggrieved for the purposes of section 73(1) of the Act.
Regulation 107(c): revoked, on 10 December 2012, by regulation 40(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 107(f): amended, on 10 December 2012, by regulation 40(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
58
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 11 r 110
Opposition to application for declaration of invalidity
108 Owner may oppose application for declaration of invalidity by filing counter-statement
(1) The owner of a trade mark that is the subject of an application to the Commissioner for a declaration of invalidity may op- pose the application by filing, within 2 months after the owner has been sent the application, a counter-statement that com- plies with regulation 109.
(2) If the owner does not, within the period specified, file the counter-statement, the Commissioner must determine the ap- plication on the documents filed by the applicant.
(3) The Commissioner must, as soon as practicable, send a copy of the counter-statement to the applicant. Regulation 108(1): amended, on 29 April 2013, by regulation 28 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
109 Requirements for counter-statement to application for declaration of invalidity
(1) A counter-statement to an application to the Commissioner for a declaration of invalidity must contain the following informa- tion: (a) the name and address for service of the owner of the
trade mark: (b) if the owner opposing has an agent, the agent’s name: (c) a response to the applicant’s grounds for a declaration
of invalidity, by admitting, denying, or claiming lack of knowledge of, each assertion made in the grounds for a declaration of invalidity:
(d) a brief statement of the facts on which the owner relies in support of continued registration.
(2) The counter-statement must be signed by the owner.
Evidence 110 Applicant for declaration of invalidity must file evidence (1) Within 2 months after being sent a copy of the counter-state-
ment, the applicant (A) must— (a) file evidence in support of the application; or
59
Part 11 r 111 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(b) notify the Commissioner that A does not intend to file evidence; or
(c) notify the Commissioner that A withdraws the applica- tion.
(2) The Commissioner must notify the owner opposing the appli- cation as soon as practicable after A has taken one of the steps under subclause (1)(b) or (c).
(3) A discontinues the application if— (a) A does not within the applicable deadline file evidence
or notify the Commissioner that A does not intend to file evidence; or
(b) A notifies the Commissioner that A withdraws the ap- plication.
Regulation 110(1): amended, on 10 December 2012, by regulation 42 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
111 Owner may file evidence The owner opposing an application for a declaration of inval- idity may file evidence in support of the registration within 2 months after receiving a copy of— (a) the evidence of the applicant (A); or (b) A’s notice to the Commissioner that A does not intend
to file evidence in support of A’s application.
112 Applicant may file evidence in reply An applicant for a declaration of invalidity may, if the owner has filed evidence in support of the registration, file evidence strictly in reply within 1 month after the applicant has received a copy of the owner’s evidence.
Part 12 Cancellation or alteration
Voluntary cancellation 113 Voluntary cancellation (1) The owner of a trademark who voluntarily cancels registration
under section 61 of the Act must give notice of the cancellation to the Commissioner.
(2) The notice must—
60
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 12 r 115
(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) [Revoked] (iii) the owner’s name: (iv) if the owner has an agent, the agent’s name: (v) if registration is cancelled in part only, a list of the
goods, services, or classes for which registration is to be cancelled:
(vi) if registration is cancelled in part, a copy of the amended specification.
Regulation 113(2)(c)(ii): revoked, on 10 December 2012, by regulation 43 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Application by aggrieved person for cancellation or alteration of registration
114 Application by aggrieved person for cancellation or alteration
(1) An application to the Commissioner for cancellation or alter- ation of registration under section 62, section 63, or section 64 of the Act must— (a) be in writing; and (b) contain the information specified in regulation 115; and (c) be signed by the applicant.
(2) The Commissioner must, as soon as practicable, send a copy of the application to the owner.
115 Information required for application for cancellation or alteration An application for cancellation or alteration of registration under section 62, section 63, or section 64 of the Act must contain the following information: (a) the applicant’s name and address for service: (b) if the applicant has an agent, the agent’s name: (c) [Revoked] (d) the number of the registration of the trademark to which
the application relates:
61
Part 12 r 116 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(e) the class or classes or goods or services to which the application relates:
(f) the extent to which cancellation or alteration is sought: (g) the grounds for cancellation or alteration: (h) a statement of the basis on which the applicant claims
to be an aggrieved person. Regulation 115(c): revoked, on 10 December 2012, by regulation 44 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Opposition to cancellation or alteration 116 Owner may oppose cancellation or alteration (1) The owner of a trade mark in respect of which another person
has applied for cancellation or alteration of registration under section 62, section 63, or section 64 of the Act may oppose the application by filing a counter-statement with the Com- missioner within 2 months after being sent a copy of the ap- plication.
(2) If the owner does not file a counter-statement within 2 months, the Commissioner must determine the application on the docu- ments filed by the applicant. Regulation 116(1): amended, on 10 December 2012, by regulation 45 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
117 Requirements for counter-statement to application for cancellation or alteration
(1) A counter-statement to an application for cancellation or alter- ation of registration must include the following information: (a) the owner’s name and address for service: (b) if the owner has an agent, the agent’s name: (c) a response to the applicant’s grounds for cancellation
or alteration, by admitting, denying, or claiming lack of knowledge of, each assertion made in the grounds for cancellation or alteration:
(d) a brief statement of the facts on which the owner relies in support of registration.
(2) The counter-statement must be signed by the owner. (3) The Commissioner must, as soon as practicable, send a copy
of the counter-statement to the applicant.
62
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 12 r 121
Evidence 118 Applicant for cancellation or alteration must file evidence (1) Within 2 months after being sent a copy of the counter-state-
ment, the applicant (A) must— (a) file evidence in support of the application; or (b) notify the Commissioner that A does not intend to file
evidence; or (c) notify the Commissioner that A withdraws the applica-
tion. (2) The Commissioner must notify the owner opposing the appli-
cation as soon as practicable after A has taken one of the steps under subclause (1)(b) or (c). Regulation 118(1): amended, on 10 December 2012, by regulation 46 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
119 Discontinuance of application The applicant (A) discontinues the application if— (a) A does not within the applicable deadline file evidence
or notify the Commissioner that A does not intend to file evidence; or
(b) A notifies the Commissioner that A withdraws the ap- plication.
120 Owner may file evidence The owner may file evidence within 2 months after receiving a copy of— (a) the applicant’s evidence; or (b) the applicant’s notice to the Commissioner that the ap-
plicant does not intend filing evidence in support of the application.
121 Applicant’s evidence in reply An applicant for cancellation or alteration may, if the owner has filed evidence, file evidence strictly in reply within 1 month after the applicant has received a copy of the owner’s evidence.
63
Part 13 r 122 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Part 13 Hearings
122 Form of hearing (1) A hearing may be—
(a) a hearing by appearance, that is, the appearance of a party before the Commissioner, whether in person or by telecommunication link acceptable to the Commis- sioner; or
(b) a hearing by submissions, that is, the consideration by the Commissioner of written submissions made by a party without an appearance; or
(c) a hearing on the papers, that is, a review of all the docu- ments already submitted in the proceeding.
(2) A partymay, subject to subclause (3), elect whether to be heard by appearance, by submissions, or on the papers.
(3) If the Commissioner considers that a party has persistently or repeatedly failed, without reasonable excuse, to attend a hear- ing or to agree to a hearing date, the Commissioner may, in his or her discretion,— (a) direct a hearing on the papers; or (b) treat the request for a hearing as withdrawn. Regulation 122(1)(b): replaced, on 29 April 2013, by regulation 29(1) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 122(1)(c): inserted, on 29 April 2013, by regulation 29(1) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 122(2): replaced, on 29 April 2013, by regulation 29(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 122(3): inserted, on 29 April 2013, by regulation 29(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
123 Hearing before exercise of Commissioner’s discretion (1) A person (Y) who claims that the proposed exercise by the
Commissioner of a power under the Act or the regulations will adversely affect Y must, if Y requires an opportunity to be heard before the power is exercised, file with the Commis- sioner a notice of a requirement to be heard.
(2) The notice must— (a) contain Y’s name and address for service, and, if Y has
an agent, the agent’s name:
64
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 13 r 125
(b) state thematter in respect of which a hearing is required: (c) be signed by Y.
(3) Y must file the notice within 10 working days of the receipt by Y of notification by the Commissioner of the decision that the Commissioner proposes to make.
(4) This regulation does not apply to— (a) a proceeding to which regulation 124 applies: (b) a proceeding if these regulations make provision for a
hearing in that proceeding.
124 Hearing in certain proceedings (1) This regulation applies to the following proceedings:
(a) an application for the registration of a trade mark to which a notice of opposition has been filed:
(b) an application for the rectification of the register: (c) an application for the revocation of the registration of a
trade mark: (d) an application for a declaration that the registration of a
trade mark is invalid: (e) an application for cancellation or alteration of registra-
tion. (2) After all the evidence has been filed, the Commissioner may,
by correspondence or by holding a pre-hearing conference of the parties, determine— (a) whether a hearing is required: (b) the form of the hearing: (c) the time for filing submissions: (d) the venue of the hearing: (e) any other matter necessary for arranging a hearing.
125 Notice of hearing by appearance (1) The Commissioner must give each party to a hearing by ap-
pearance notice of the date and venue of the hearing not less than 1 month before the date of the hearing.
(2) Subclause (1) does not apply if— (a) the date and venue have been determined at a prehearing
conference; or (b) the parties waive compliance with subclause (1); or
65
Part 13 r 126 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(c) in the Commissioner’s opinion, notice of 1 month is not practicable for reasons of urgency.
126 Hearing fee (1) Each party who wishes to be heard at a hearing must pay a
hearing fee. (2) The fee must be paid,—
(a) in the case of a hearing by appearance, not less than 10 working days before the date set for the hearing:
(b) in the case of a hearing by submissions, when the party files the submissions with the Commissioner.
(2A) In the case of a hearing required under regulation 123, the fee must accompany the filing of the notice of requirement to be heard.
(3) The Commissioner must refund a hearing fee paid by a party who withdraws from the hearing if the Commissioner receives notice of withdrawal not less than 5 working days before the date set for the hearing. Regulation 126(2A): inserted, on 29 April 2013, by regulation 30 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
127 Venue for hearing by appearance (1) If 1 party is in Wellington, the hearing must be held in Wel-
lington or the place agreed by all the parties as the venue for the hearing.
(2) If no party is inWellington, the Commissioner must determine where the hearing will be held.
(3) The Commissioner may require the party or parties concerned to pay the Commissioner’s costs in holding the hearing at a venue outside Wellington.
128 Conduct of hearing by appearance (1) The Commissioner must determine how a hearing by appear-
ance must be conducted. (2) Members of the public may attend a hearing by appearance,
unless the Commissioner decides that it is not appropriate.
66
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 14 r 130
Part 14 Registration General
129 Additional contents of register The following matters, additional to the matters specified in section 182(a) to (f) of the Act, must be entered on the register for each trade mark: (a) the number that the Commissioner has assigned to the
trade mark: (b) the specification of goods or services in each class for
which the trade mark is registered: (c) the edition of the Nice Classification or a previous edi-
tion of the Nice Classification or the schedule under the Trade Marks Regulations 1954 that has been used for classification of the specifications:
(d) if the registration is made with the consent of the owner of another registered trade mark or an applicant for registration,— (i) an entry of “By consent”; and (ii) the registration number of the other trade mark or
the application for registration, as the case may be:
(e) where applicable, a statement that the trade mark was registered on— (i) the basis of evidence of use or distinctiveness; or (ii) the basis of honest concurrent use with another
registration or application that has priority: (f) the date when the registration is due to expire: (g) any undertaking that must be entered on the register
under these regulations: (h) the date of conversion of a specification, if applicable. Regulation 129 heading: amended, on 29 April 2013, by regulation 31(1) of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 129(e): replaced, on 29 April 2013, by regulation 31(2) of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
130 Certificate of registration (1) The certificate of registration of a trade mark issued by the
Commissioner must contain the following information:
67
Part 14 r 131 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(a) the number that the Commissioner has assigned to the trade mark:
(b) a representation of the trade mark: (c) the actual and deemed date of registration: (d) the class or classes in which the trademark is registered: (e) the goods and services for which the trade mark is regis-
tered. (2) The certificate of registration may contain any other informa-
tion that the Commissioner thinks appropriate.
131 Certified copy of entry in register (1) The Commissioner must, on the request of any person, provide
that person with any of the following documents: (a) a certified copy of any entry in the register of trade
marks: (b) a certified copy of, or an extract from, any register, pub-
lic document, or record that must be kept under the Act or these regulations.
(2) A request for a document referred to in subclause (1) must— (a) be in writing; and (b) contain the name and communication address of the per-
son making the request; and (c) be accompanied by the prescribed fee, if any. Regulation 131(2)(c): amended, on 29 April 2013, by regulation 32 of the Trade Marks Amendment Regulations 2013 (SR 2013/49).
Division of trade mark registration Heading: inserted, on 10 December 2012, by regulation 47 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
131A Owner of trade mark may apply for division of registration
(1) An owner of a trade mark may apply to the Commissioner for division of registration of the trade mark.
(2) An application for division must— (a) be in writing; and (b) contain the information set out in regulation 131B. Regulation 131A: inserted, on 10 December 2012, by regulation 47 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
68
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 14 r 132
131B Information required for application for division An application for division of registration must contain the following information: (a) the owner’s name and address: (b) if the owner has an agent, the agent’s name: (c) the registration number of the trade mark: (d) in the case of division of a series of marks, the part of
the series to be divided out: (e) in the case of division of classes, a list of the classes to
be divided out: (f) in the case of division of goods or services, a list of the
goods or services to be divided out: (g) if the registration is subject to a proceeding filed with
the Commissioner, a statement that the other party, or parties, to the proceeding have consented to the appli- cation for division.
Regulation 131B: inserted, on 10 December 2012, by regulation 47 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
131C Effect of division of registration If the Commissioner allows an application for division of registration, the part that is divided out— (a) is independent of the original registration: (b) retains the filing date of the original registration. Regulation 131C: inserted, on 10 December 2012, by regulation 47 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Renewal of registration 132 Notice of expiry (1) In this regulation, notice means the notice that the Commis-
sioner must send to the owner of a trade mark under section 59(2) of the Act.
(2) The Commissioner must send the notice— (a) to the owner’s address for service: (b) not later than 2 months before the expiry of registration.
(3) In addition to the matters specified in section 59(2) of the Act, the notice must state the following: (a) registration will expire if it is not renewed: (b) the last day when it can be renewed:
69
Part 14 r 133 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(c) the amount of the renewal fee, and how and where it may be paid.
133 Application for renewal (1) An application for the renewal of the registration of a trade
mark must be— (a) in writing; and (b) filed with the Commissioner before the date of expiry,
but not earlier than 1 year before that date; and (c) accompanied by the prescribed fee.
(2) The application must contain the following information: (a) the trade mark’s registration number: (b) if the trade mark is registered in more than 1 class, de-
tails of the class or classes for which registration is to be renewed.
Regulation 133(2): replaced, on 10 December 2012, by regulation 48 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Restoration to register 134 Commissioner may specify conditions for restoration to
register (1) For restoration of a trade mark to the register, the owner of the
trade mark must, within 12 months after it has been removed from the register, comply with any conditions specified by the Commissioner under section 59(2)(c) of the Act.
(2) The Commissioner must not extend the period of 12 months referred to in subclause (1).
Alteration of register 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 owner’s name: (ii) if the owner has an agent, the agent’s name:
70
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 14 r 137
(iii) the new name or address to be entered on the register.
Regulation 135: replaced, on 16 September 2011, by section 28(4) of the Trade Marks Amendment Act 2011 (2011 No 71). Regulation 135(c): replaced, on 10 December 2012, by regulation 49 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
136 Request to strike out goods or services, or classes of goods or services A request under section 78(b) of the Act that the Commis- sioner strike out goods or services, or classes of goods or ser- vices, 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) the owner’s name: (iii) if the owner has an agent, the agent’s name: (iv) a list of the goods, services, or classes to be struck
out: (v) if part of a class is to be struck out, a copy of the
amended specification. Regulation 136(c): replaced, on 10 December 2012, by regulation 50 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
137 Request for entry, alteration, or removal of memorandum on register A request under section 78(c) of the Act for the entry, alter- ation, or removal of a memorandum on the register 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) the owner’s name: (iii) if the owner has an agent, the agent’s name: (iv) the memorandum to be entered, the alteration to
be made to the memorandum, or the memoran- dum to be removed (as the case may be).
Regulation 137 heading: amended, on 16 September 2011, by section 28(5) of the Trade Marks Amendment Act 2011 (2011 No 71).
71
Part 14 r 138 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Regulation 137: amended, on 16 September 2011, by section 28(6) of the Trade Marks Amendment Act 2011 (2011 No 71). Regulation 137(c): replaced, on 10 December 2012, by regulation 51 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Voluntary disclaimer 138 Notice of voluntary disclaimer of trade mark by owner (1) The owner of a trade mark who voluntarily disclaims a right
under section 69 of the Act must notify the Commissioner of the disclaimer in writing.
(2) The notice of disclaimer must contain the following informa- tion: (a) the owner’s name: (b) if the owner has an agent, the agent’s name: (c) the application number or registration number of the
trade mark to which the disclaimer relates: (d) if the owner disclaims, a description of that part of the
trade mark that is disclaimed. (e) [Revoked]
(3) The notice must be signed by the owner. Regulation 138(2)(c): replaced, on 10 December 2012, by regulation 52 of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 138(2)(d): replaced, on 10 December 2012, by regulation 52 of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 138(2)(e): revoked, on 10 December 2012, by regulation 52 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Part 15 Application for conversion of specification
139 Application for conversion of specification The owner of a trade mark registered with a specification clas- sified under Schedule 3 or Schedule 4 of the Trade Marks Regulations 1954 or any previous edition of the Nice Clas- sification may apply for conversion of the specification to a classification under the Nice Classification.
140 Information required for application for conversion An application for conversion must contain the following in- formation:
72
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 15A r 142A
(a) the owner’s name and address for service: (b) if the owner has an agent, the agent’s name: (c) the registration number of the trade mark.
141 Applicant may nominate registration in additional classes An applicant for conversion may nominate registration in ad- ditional classes if goods or services classified in a single class under Schedule 3 or Schedule 4 of the Trade Marks Regula- tions 1954 or any previous edition of the Nice Classification fall into additional classes under the Nice Classification.
142 Proposed form of conversion (1) The Commissioner must notify an applicant for conversion of
the proposed form of the conversion. (2) The applicant may apply for a hearing in relation to the Com-
missioner’s decision as to the proposed form within 1 month after notification.
(3) If the applicant does not apply for a hearing within 1 month of notification, the Commissioner must— (a) convert the specification in the proposed form; and (b) enter the date of the conversion in the register.
Part 15A Conversion of specification by
Commissioner Part 15A: inserted, on 10 December 2012, by regulation 53 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
142A Application This Part— (a) applies to any trade mark that is registered with a spe-
cification classified under Schedule 3 or 4 of the Trade Marks Regulations 1954 or any previous edition of the Nice Classification; and
(b) provides for the conversion of the specification of that trade mark to a classification under the Nice Classifica- tion.
73
Part 15A r 142B Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Regulation 142A: inserted, on 10 December 2012, by regulation 53 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
142B Conversion process For the purpose of converting the specification of a trade mark to which this Part applies to a classification under the Nice Classification, the Commissioner may write to the owner of each trade mark registration that does not conform to the Nice Classification as at that date— (a) informing the owner of the Commissioner’s intention to
convert the classification and the proposed form of that conversion; and
(b) requiring the owner to respond, within 1 month after the date shown on the letter (the required date), by either— (i) accepting the conversion; or (ii) suggesting an alternative form of conversion
(which may include, without limitation, nomin- ating registration in additional classes if goods or services classified in a single class under Schedule 3 or 4 of the Trade Marks Regulations 1954 or any previous edition of the Nice Clas- sification fall into additional classes under the Nice Classification); and
(c) informing the owner that, if he or she does not respond by the required date, the classificationmay be converted as proposed by the Commissioner.
Regulation 142B: inserted, on 10 December 2012, by regulation 53 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
142C Where owner fails to respond If the owner does not respond by the required date, the Com- missioner may— (a) convert the specification as proposed by the Commis-
sioner; and (b) enter the date of the conversion in the register. Regulation 142C: inserted, on 10 December 2012, by regulation 53 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
74
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 16 r 146
142D Response by owner (1) If, by the required date, the owner responds to the Commis-
sioner suggesting an alternative form of conversion, the Com- missioner must— (a) determine the form of conversion; and (b) notify the owner of the determination.
(2) If the owner disagrees with the form of conversion determined by the Commissioner, he or she may request a hearing. Regulation 142D: inserted, on 10 December 2012, by regulation 53 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Part 16 Assignment or transmission Commissioner’s certificate
143 Request for Commissioner’s certificate [Revoked] Regulation 143: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
144 Information that must be contained in request for certificate [Revoked] Regulation 144: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
145 Application to register title to trade mark (1) This regulation applies to an application under section 82(2)
of the Act for registration of title to a trade mark or to change the name of the applicant on an application for registration, as the case may be.
(2) The application must— (a) be in writing; and (b) contain the information specified in regulation 146.
146 Information required for application to register title to trade mark
(1) An application under section 82(2) of the Act must contain the following information:
75
Part 16 r 146 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(a) the name of the person (C) who assigned or transmitted the trade mark:
(b) if C has an agent, the agent’s name: (c) the name and address for service of the person (D) to
whom C assigned or transmitted the trade mark: (d) if D has an agent, the agent’s name: (e) [Revoked] (f) whether the assignment or transmission was full or par-
tial: (g) the date on which the assignment or transmission be-
came effective: (h) the class or classes that were assigned or transmitted: (i) in the case of the assignment or transmission of some
only of the goods or services within a classification, a statement of the goods or services assigned or transmit- ted:
(j) the application or registration number of the trade mark: (k) except as provided in subclause (2), a copy of the docu-
ment of assignment or transmission or other documents acceptable to the Commissioner that are proof of D’s title to the trade mark.
(l) [Revoked] (2) If the assignment or transmission of the trade mark is the result
of a contract,— (a) the Commissioner may request the applicant under sec-
tion 82(2) of the Act to submit with the application any one of the following documents: (i) a copy of the contract of assignment: (ii) an extract of the contract: (iii) a certificate of transfer: (iv) a transfer document; and
(b) a document described in paragraph (a) does not have to be certified for the purposes of the application; and
(c) the Commissioner may require the applicant to provide further information if the Commissioner has reasonable grounds to doubt the veracity of any information con- tained in the application or in any document submitted with the application.
76
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 16A r 146C
Regulation 146(1)(c): amended, on 10 December 2012, by regulation 54(1) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 146(1)(e): revoked, on 10 December 2012, by regulation 54(2) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 146(1)(k): amended, on 10 December 2012, by regulation 54(3) of the Trade Marks Amendment Regulations 2012 (SR 2012/336). Regulation 146(1)(n( � revoked, on 29 April 2013, by regulation 33 of the Trade Marks Amendment Regulations 2013 (SR 2013/49). Regulation 146(2): replaced, on 10 December 2012, by regulation 54(4) of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Part 16A Enforcement officers
Part 16A: inserted, on 7 October 2011, by regulation 4 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
146A Form of warrant of appointment of enforcement officer A warrant of appointment issued to an enforcement officer under section 134B of the Act must be in form 1 of Sched- ule 1A. Regulation 146A: inserted, on 7 October 2011, by regulation 4 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
146B Form of warrant to search place or thing A search warrant issued under section 134F of the Act must be in form 2 of Schedule 1A. Regulation 146B: inserted, on 7 October 2011, by regulation 4 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
146C Form of order to produce documents under section 134Y of Act An order to produce documents under section 134Y of the Act must be in form 3 of Schedule 1A. Regulation 146C: inserted, on 7 October 2011, by regulation 4 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
77
Part 17 r 147 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Part 17 Licensees [Revoked]
Part 17: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
Registration of licensees [Revoked]
Heading: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
147 Application for registration of licensee [Revoked] Regulation 147: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
148 Information required for application for registration of licensee [Revoked] Regulation 148: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
Alteration of registration of licensee [Revoked]
Heading: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
149 Application for alteration of registration of licensee [Revoked] Regulation 149: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
150 Information required for application for alteration of registration of licensee [Revoked] Regulation 150: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
78
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 18 r 156
Cancellation of registration of licensee [Revoked]
Heading: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
151 Application for cancellation of registration of licensee [Revoked] Regulation 151: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
152 Information required for application for cancellation of registration of licensee [Revoked] Regulation 152: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
153 Owner must send licensee copy of application to cancel [Revoked] Regulation 153: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
154 Intervention by owner or licensee [Revoked] Regulation 154: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
155 Commissioner’s powers on application for cancellation or alteration of registration of licensee [Revoked] Regulation 155: revoked, on 16 September 2011, by section 28(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
Part 18 Border protection measures
156 Form of section 137 notice A notice under section 137 of the Act must be in the form set out in Schedule 2.
79
Part 18 r 157 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
157 Evidence in support of claim (1) A person who gives a notice under section 137 must provide
evidence to the chief executive in support of the claim that an infringing sign is used on, or in physical relation to, the goods that are specified in the notice.
(2) The chief executive may direct that the evidence must be pro- vided when the notice is given or at any later time.
158 Notice of assignment, transmission, and other matters A person who has given a notice under section 137 of the Act must give the chief executive written notice of— (a) any assignment or transmission of the trade mark: (b) any change in the particulars contained in the notice or
in any evidence or other information given to the chief executive in support of the request made in the notice.
159 Security and indemnity (1) A personwho gives notice under section 137 of theActmust, if
required by the chief executive, give security or an indemnity or both security and an indemnity for the amount and on the terms and conditions that the chief executive may decide.
(2) The chief executive may direct that the security or indemnity or both must be given when the notice is given or at any later time.
(3) A person to whom goods are to be, or have been, released under section 150 of the Act must, if required by the chief executive, give security or an indemnity or both security and an indemnity for the amount and on the terms and conditions that the chief executive may decide.
160 Disposal of forfeited goods (1) Goods forfeited to the Crown under section 151 or section 154
of the Act must be sold, destroyed, or otherwise disposed of in the manner that the chief executive directs.
(2) However, the chief executive must not direct a step to be taken under subclause (1) without first having regard to the need to ensure that the step to be taken does not adversely affect the owner or the licensee of the trade mark.
80
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 18 r 160E
Regulation 160(1): amended, on 16 September 2011, by section 28(9) of the Trade Marks Amendment Act 2011 (2011 No 71).
160A Form of notice to produce documents concerning goods in control of Customs A notice under section 155B of the Act requiring a person to produce documents concerning goods in the control of Cus- toms must be in form 1 of Schedule 3. Regulation 160A: inserted, on 7 October 2011, by regulation 5 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
160B Form of notice to appear and answer questions concerning goods in control of Customs A notice under section 155C of the Act requiring a person to appear and answer questions concerning goods in the control of Customs must be in form 1 of Schedule 3. Regulation 160B: inserted, on 7 October 2011, by regulation 5 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
160C Form of application by Customs officer for order to produce documents An application by a Customs officer under section 155D of the Act for an order to produce documents under section 155E of the Act must be in form 2 of Schedule 3. Regulation 160C: inserted, on 7 October 2011, by regulation 5 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
160D Form of order to produce documents under section 155E of Act An order to produce documents under section 155E of the Act must be in form 3 of Schedule 3. Regulation 160D: inserted, on 7 October 2011, by regulation 5 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
160E Form of application by Customs officer for search warrant An application by a Customs officer under section 155G of the Act for a search warrant to be issued under that section must be in form 4 of Schedule 3.
81
Part 18 r 160F Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Regulation 160E: inserted, on 7 October 2011, by regulation 5 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
160F Form of warrant to Customs officer to search place or thing A search warrant issued to a Customs officer under section 155G of the Act must be in form 5 of Schedule 3. Regulation 160F: inserted, on 7 October 2011, by regulation 5 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
Part 19 Miscellaneous
161 Advertisement by Commissioner The Commissioner must advertise information that is required by the Act to be advertised in the format, manner, and fre- quency that the Commissioner thinks appropriate.
162 Commissioner must notify decision (1) The Commissioner must,—
(a) in the case of a decision by the Commissioner at the conclusion of a proceeding, notify all the parties to the proceeding in writing:
(b) in the case of the Commissioner’s exercise of any other discretionary power under the Act or the regulations, notify the party or parties affected in writing.
(2) For the purpose of an appeal under section 170 of the Act, a decision is given— (a) when the notice of the decision is sent by the Commis-
sioner; or (b) if a person to whom the notice has been sent requires
the Commissioner to notify the reasons for the decision, when the reasons for the decision are sent by the Com- missioner.
163 Commissioner must give reasons for decision if required (1) A person to whom a notice is sent under regulation 162 may
require the Commissioner to notify that person of the reasons for the decision, if the Commissioner has not already done so.
82
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Part 21 r 168
(2) Notice that a person requires the reasons for a decision must be sent to the Commissioner within the time for appealing against the decision.
164 Commissioner may waive requirement for information The Commissioner may waive a requirement in these regu- lations for information to be provided in any proceeding or document if the Commissioner is satisfied that the informa- tion is unnecessary.
Part 20 Revocation of regulations
165 Trade Marks Regulations 1954 revoked (1) The Trade Marks Regulations 1954 are revoked. (2) Despite revocation, the Trade Marks Regulations 1954 con-
tinue in force and apply in respect of the matters to which the Trade Marks Act 1953 continues to apply under section 203 of the Act.
166 Trade Marks (Border Protection and Transitional Applications) Regulations 1994 revoked The Trade Marks (Border Protection and Transitional Appli- cations) Regulations 1994 are revoked.
Part 21 Fees
167 Amount of fees (1) The amount of each fee that must be paid under these regula-
tions is set out in Schedule 1. (2) The fees prescribed by these regulations are exclusive of goods
and services tax.
168 Commissioner may refuse to take step before fee paid (1) The Commissioner may refuse to take any step under the Act
or regulations in respect of which a fee is payable unless the fee is first paid.
83
Part 21 r 169 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
(2) The Commissioner may refuse to accept any application, no- tice, or request under the Act or these regulations in respect of which a fee is payable unless the fee is first paid.
169 Requirement that prescribed fee accompany document to be filed Subject to the provisions of the Act, a requirement in these regulations that the prescribed fee must accompany a docu- ment to be filed with the Commissioner is satisfied if the party filing the document has, before filing the document, made an arrangement acceptable to the Commissioner for payment of the fee.
170 Form of payment (1) A fee payable under the Act or these regulations must be paid
in a form that is acceptable to the Commissioner. (2) The Commissioner must, from time to time, publish a state-
ment of acceptable forms of payment.
171 Currency All fees must be paid in New Zealand currency.
84
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Schedule 1
Schedule 1 r 167 Fees
Schedule 1: replaced, on 10 December 2012, by regulation 55 of the Trade Marks Amendment Regulations 2012 (SR 2012/336).
Activity Fee ($)
Request for search advice per class 40.00 Request for preliminary advice per class
40.00
Application to register a trade mark in 1 class
150.00
Renewal of registration of a trade mark in 1 class
350.00
Notice of opposition to registration of a trade mark
350.00
Hearing by Commissioner for each party
850.00
Application for revocation of registration of trade mark
350.00
Application for declaration of invalidity of registration
350.00
85
Schedule 1A Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Schedule 1A rr 146A–146C Forms relating to enforcement officers
Schedule 1A: inserted, on 7 October 2011, by regulation 6 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
Form 1 r 146A Warrant of appointment of enforcement officer
Section 134B, Trade Marks Act 2002
(Front of warrant) Enforcement officer Warrant of appointment
Full name: Identification number: [Photo of warrant holder] Signature:
(Back of warrant) Warrant of appointment issued under section 134B of the Trade Marks Act 2002 This is to certify that the person whose name, photograph, and sig- nature appear on this warrant— • is an enforcement officer appointed under section 134A of the
Trade Marks Act 2002; and • may enter and examine a place described in section 134D of
that Act without a search warrant; and • may exercise the other powers conferred on enforcement offi-
cers by that Act.
Date: Signature: Chief executive, Ministry of Economic Development
Schedule 1A form 1: inserted, on 7 October 2011, by regulation 6 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
86
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Schedule 1A
Form 2 r 146B Search warrant to enter and search place or thing
Section 134F, Trade Marks Act 2002 To every enforcement officer appointed under section 134A of the Trade Marks Act 2002 and every member of the Police 1 I am satisfied, on an application made in accordance with sec-
tions 134G and 134H of the Trade Marks Act 2002 by [full name of applicant], that, in relation to [specify address or de- scription of place or thing that may be entered and searched], there are reasonable grounds for believing that— *(a) an offence against the Trade Marks Act 2002, namely
[specify offence provision], has been, or is being, com- mitted at that place/committed involving that thing*:
*(b) there is at, in, on, over, or under that place/that thing* some thing that is evidence of an offence against [spe- cify offence provision] of the Trade Marks Act 2002:
*(c) there is at, in, on, over, or under that place/that thing* some thing that is intended to be used for the purposes of committing an offence against [specify offence pro- vision] of the Trade Marks Act 2002.
*Select those that apply. 2 This warrant authorises you, pursuant to section 134F of the
Trade Marks Act 2002, to— (a) enter and search [address or description of place or
thing] at any time that is reasonable in the circum- stances; and
(b) use any assistance that is reasonable in the circum- stances; and
(c) 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; and
(d) seize [describe, in reasonable detail, what may be seized]; and
(e) bring and use in or on the place/thing* searched any equipment, to use any equipment found on the place/thing*, and to extract any electricity from the place/thing* to operate the equipment that is reasonable
87
Schedule 1A Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Form 2—continued
to use in the circumstances, for the purpose of carrying out the entry and search; and
(f) copy any document, or part of any document, that may lawfully be seized; and
(g) take photographs or sound or video recordings of the place/thing* and of any thing found in that place if you have reasonable grounds to believe that the photographs or sound recordings may be relevant in any proceedings related to the entry and search; and
(h) do the following in a manner and for a duration that is reasonable for the purposes of carrying out the search: (i) secure the place/thing* searched, any area within
that place/thing*, or any thing found within that place/thing*:
(ii) exclude any person from that place/thing*, or from any areawithin the place/thing*, or give any other reasonable direction to that person if you have reasonable grounds to believe that the per- son will obstruct or hinder the exercise of your powers under this warrant.
*Select one. 3 A person assisting you (other than a member of the Police)
is subject to your control and has the power to do any of the following: (a) enter the place/thing* to be searched: (b) while in your company and under your direction, use
reasonable force in respect of any property for the pur- poses of carrying out the entry and search:
(c) search areas within the place/thing* that you determine may lawfully be searched:
(d) seize any thing that you determine may lawfully be seized:
(e) take photographs and sound and video recordings of the place/thing* and things found in the place/thing* if you determine that those things may lawfully be done:
(f) bring in or on to the place/thing* and use any equip- ment, make use of equipment found on the place/thing*,
88
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Schedule 1A
Form 2—continued
or extract electricity from the place/thing* for the pur- poses of operating the equipment that you determine may lawfully be used:
(g) copy any document, or part of a document, that you determine may lawfully be copied.
*Select one. 4 This warrant may be executed [specify period in accordance
with section 134I(4)(g) of the Trade Marks Act 2002] from the date of issue of the warrant.
5 This warrant is subject to the following conditions: [specify any conditions].
6 This warrant may be executed on 1 occasion/[specify number] occasions*. *Select one.
Date: Signature: Name of issuing officer: (District Court Judge/Justice of the Peace/Community Magis- trate/Registrar of a District Court*) *Select one.
Schedule 1A form 2: inserted, on 7 October 2011, by regulation 6 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
89
Schedule 1A Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Form 3 r 146C Order to produce documents Section 134Y, Trade Marks Act 2002
To [name (full name if known) of person required to produce docu- ment(s)] 1 An application under section 134X of the Trade Marks Act
2002 for an order requiring you to produce documents under section 134Y of that Act was made to me by [full name of applicant], enforcement officer, on [date].
2 I am satisfied that there are reasonable grounds for believing that you [name (full name if known)] have possession, custody, or control of a document that is/documents that are* evidence of, or may be of significant relevance to the investigation of, an offence against section(s) [specify relevant section(s) between 120 and 124] of the Trade Marks Act 2002.
3 You are required by this order to produce to the enforcement officer named in paragraph 4 the following document that is/documents that are* in your possession, custody, or control: [specify the document or documents to be produced].
4 The document/documents* must be produced to [full name], enforcement officer, at [time] on [day, date] at [place].
5 This order is subject to the following conditions: [specify any conditions].
6 This order to produce documents is made under section 134Y of the Trade Marks Act 2002.
*Select one.
Date: Signature: (District Court Judge)
Note 1 Under section 5(1) of the Trade Marks Act 2002, a document
means— (a) any material, whether or not it is signed or otherwise
authenticated, that bears symbols (including words and
90
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Schedule 1A
Form 3—continued
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 infor- mation derived from that information.
2 The enforcement officer to whom you produce any document for inspection under this order may, under section 134Z of the Trade Marks Act 2002, do 1 or more of the following: (a) inspect the document: (b) take extracts from the document: (c) make copies of the document.
3 It is an offence against section 134ZA of the Trade Marks Act 2002 to fail, without reasonable excuse, to comply with an order to produce documents made under section 134Y of that Act. An individual who commits an offence against section 134ZA of the Trade Marks Act 2002 is liable on summary conviction to imprisonment for a term not exceeding 6 months or to a fine not exceeding $10,000. A body corporate that commits an offence against section 134ZA of the Trade Marks Act 2002 is liable to a fine not exceeding $50,000. Schedule 1A form 3: inserted, on 7 October 2011, by regulation 6 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
91
Schedule 2 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Schedule 2 r 156 Form of notice under section 137 of Trade
Marks Act 2002 Notice requesting detention of goods infringing
registered trade mark To the Chief Executive of the New Zealand Customs Service [Insert full name and address of registered owner or registered li- censee of trademark], of [specify] is [insert whether registered owner or registered licensee] of trade mark No [number] in Class [specify] A copy of the registration of the mark is attached to this notice. The Chief Executive of the New Zealand Customs Service is re- quested to detain any goods on, or in physical relation to, which an infringing sign is used that are in, or at any time come into, the con- trol of the New Zealand Customs Service. This notice is in force for the period [insert period that is not longer than 5 years from the date of the notice or, if the registration of the trade mark will expire within 5 years from the date of the notice, not longer than the period for which the registration will last]. Details of the person and business or residential address for the ser- vice of any notice are: Name: Business/residential address: Postal Address: Telephone No: Facsimile No: Email:
Date: Signature:
92
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Schedule 3
Schedule 3 rr 160A–160F Forms relating to Customs officers
Schedule 3: inserted, on 7 October 2011, by regulation 7 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
Form 1 rr 160A, 160B Notice to produce documents/to appear and answer questions/to produce documents and
appear and answer questions* concerning goods in control of Customs
Section 155B/Section 155C/Sections 155B and 155C*, Trade Marks Act 2002
*Select one.
To [name (full name if known) of person required to produce docu- ments/appear and answer questions] 1 A Customs officer believes on reasonable grounds that—
(a) the goods in the control of Customs specified in para- graph 2 have been imported in breach of section 124(a) of the Trade Marks Act 2002; and
(b) you imported the specified goods or acted as agent of the person who imported those goods.
2 The goods in the control of Customs are: [set out particulars of the goods to which this notice relates].
3 You are required, at [time] on [day, date] at [place],— *(a) to produce to [full name of Customs officer], Customs
officer, the following document that is/documents that are* in your possession or control that the Customs offi- cer considers relevant to determining whether the goods should be seized under section 155A of the TradeMarks Act 2002 or released: [specify and, if more than 1, num- ber (a), (b) etc, the document(s) to be produced]:
*(b) to appear and answer questions that [full name of Cus- toms officer], Customs officer, considers relevant to de- termining whether the goods should be seized under section 155A of the Trade Marks Act 2002 or released.
*Select those that apply.
93
Schedule 3 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Form 1—continued
4 This notice is given under section 155B/section 155C/sections 155B and 155C* of the Trade Marks Act 2002.
*Select one.
Date: Signature: Chief executive, New Zealand Customs Service
Note *1 Under section 5(1) of the Trade Marks Act 2002, a document
means— (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 infor- mation derived from that information.
*Delete if not applicable.
*2 The Customs officer to whom you produce any document for inspection under this notice may, under section 155F of the Trade Marks Act 2002, do 1 or more of the following: (a) inspect the document: (b) take extracts from the document: (c) copy the document. * Delete if not applicable.
3 It is an offence against section 155J(4) of the Trade Marks Act 2002—
94
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Schedule 3
Form 1—continued
(a) to refuse or fail, without reasonable excuse, to comply with a notice to produce documents given under section 155B of that Act; or
(b) for a person who is required by a notice given under section 155C of that Act to appear before a Customs officer and to answer questions— (i) to refuse or fail, without reasonable excuse, to
appear before a Customs officer in accordance with the notice; or
(ii) to refuse, without reasonable excuse, to answer any question.
An individual who commits an offence against section 155J(4) of the Trade Marks Act 2002 is liable on summary conviction to imprisonment for a term not exceeding 6 months or to a fine not exceeding $10,000. A body corporate that commits an offence against section 155J(4) of the Trade Marks Act 2002 is liable to a fine not exceeding $50,000. Schedule 3 form 1: inserted, on 7 October 2011, by regulation 7 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
95
Schedule 3 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Form 2 r 160C Application by Customs officer for order to
produce documents Section 155D, Trade Marks Act 2002
To a District Court Judge 1 I, [full name of applicant], Customs officer, by this document
apply on oath for an order under section 155E of the Trade Marks Act 2002 that [name (full name if known)] be required to produce for inspection by a Customs officer in accordance with paragraph 2 the following document that is/documents that are* in that person’s possession, custody, or control: [spe- cify and, if more than 1, number (a), (b), etc, the document(s) sought].
2 The document is/documents are* to be produced to [full name of Customs officer], Customs officer, at [time] on [day, date] at [place].
3 The ground on which the order is sought is that I have rea- sonable grounds to believe that [name (full name if known)] has possession, custody, or control of a document that is/docu- ments that are* evidence of, or may be of significant relevance to the investigation of, an offence against section(s) [specify relevant section(s) between 120 and 124] of the Trade Marks Act 2002 in respect of imported goods.
4 The evidence relied on for the purpose of this application is as follows: [set out in reasonable detail, in numbered paragraphs, all relevant information in support of the ground stated in paragraph 3].
*Select one.
Sworn/Affirmed* at [place, date] Before me: [full name, signature] (a solicitor of the High Court of New Zealand or Registrar/Deputy Registrar* of a District/the High* Court or Justice of the Peace*) *Select one.
Schedule 3 form 2: inserted, on 7 October 2011, by regulation 7 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
96
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Schedule 3
Form 3 r 160D Order to produce documents Section 155E, Trade Marks Act 2002
To [name (full name if known) of person required to produce docu- ment(s)] 1 An application under section 155D of the Trade Marks Act
2002 for an order requiring you to produce documents under section 155E of that Act was made to me by [full name of applicant], Customs officer, on [date].
2 I am satisfied that there are reasonable grounds for believing that you [name (full name if known)] have possession, custody, or control of a document that is/documents that are* evidence of, or may be of significant relevance to the investigation of, an offence against section(s) [specify relevant section(s) be- tween 120 and 124] of the Trade Marks Act 2002 in respect of imported goods.
3 You are required by this order to produce to the Customs offi- cer named in paragraph 4 the following document that is/docu- ments that are* in your possession, custody, or control: [spe- cify the document or documents to be produced].
4 The document/documents* must be produced for inspection to [full name of Customs officer], Customs officer, at [time] on [day, date] at [place].
5 This order is subject to the following conditions: [specify any conditions].
6 This order to produce documents is made under section 155E of the Trade Marks Act 2002.
*Select one.
Date: Signature: (District Court Judge)
Note 1 Under section 5(1) of the Trade Marks Act 2002, a document
means—
97
Schedule 3 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Form 3—continued
(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 infor- mation derived from that information.
2 The Customs officer to whom you produce any document for inspection under this order may, under section 155F of the Trade Marks Act 2002, do 1 or more of the following: (a) inspect the document: (b) take extracts from the document: (c) make copies of the document.
3 It is an offence against section 155J(4) of the Trade Marks Act 2002 to fail, without reasonable excuse, to comply with an order to produce documents made under section 155E of that Act. An individual who commits an offence against section 155J(4) of the Trade Marks Act 2002 is liable on summary conviction to imprisonment for a term not exceeding 6 months or to a fine not exceeding $10,000. A body corporate that commits an offence against section 155J(4) of the Trade Marks Act 2002 is liable to a fine not exceeding $50,000. Schedule 3 form 3: inserted, on 7 October 2011, by regulation 7 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
98
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Schedule 3
Form 4 r 160E Application by Customs officer for search
warrant Section 155G, Trade Marks Act 2002
1 I [full name of applicant], Customs officer, apply under section 155G of the Trade Marks Act 2002 for a search warrant to be issued authorising every Customs officer to enter and search [specify address or description of place or thing] at any time that is reasonable in the circumstances.
2 The ground on which the application is made is that there are reasonable grounds for believing that there is/there are* in, on, over, or under that place/that thing* a thing that is/things that are* evidence of, or of significant relevance to the investiga- tion of, an offence against [specify relevant section(s) between 120 and 124 of the Trade Marks Act 2002] in respect of im- ported goods, namely [describe as specifically as possible the item or items believed to be in, on, over, or under the place or thing].
3 I rely on the following in support of this application: [set out in reasonable detail all relevant information in support of the ground referred to in paragraph 2].
4 The period of time, in accordance with section 134I(4)(g) of the Trade Marks Act 2002, for which the warrant is sought is: [specify].
5 The number of occasions on which the warrant is sought to be exercised is 1/[specify number]*.
6 Omit this paragraph if it does not apply The grounds on which the execution of the warrant on more than 1 occasion is believed to be necessary are: [set out in rea- sonable detail all relevant information concerning the grounds on which execution of the warrant more than once is believed to be necessary].
7 Within the 3 months immediately preceding this application, in respect of [address or description of place or thing to be searched], the following application(s) for a search warrant has/have* been made: [set out the details of any other relevant application(s) for a search warrant, including the result of that application/those applications].
99
Schedule 3 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Form 4—continued
or Having made reasonable inquiries within the agency in which I am employed/engaged*, I am not aware of any other appli- cation for a search warrant in respect of [address or descrip- tion of place or thing to be searched] being made within the 3 months immediately preceding this application.*
*Select one.
Date: Signature: (Customs officer)
Schedule 3 form 4: inserted, on 7 October 2011, by regulation 7 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
100
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Schedule 3
Form 5 r 160F Search warrant to enter and search place or thing
Section 155G, Trade Marks Act 2002 To every Customs officer 1 I am satisfied on an application made in accordance with sec-
tion 155G of the Trade Marks Act 2002 by [full name of appli- cant], Customs Officer, that, in relation to [specify address or description of place or thing that may be entered or searched], there are reasonable grounds to believe that there is in, on, over, or under that place/that thing* some thing that is evi- dence of, or of significant relevance to the investigation of, an offence against [specify relevant section(s) between 120 and 124 of the TradeMarks Act 2002] in respect of imported goods.
2 This warrant authorises you, pursuant to section 155G of the Trade Marks Act 2002, to— (a) enter and search [address or description of place or
thing] at any time that is reasonable in the circum- stances; and
(b) use any assistance that is reasonable in the circum- stances; and
(c) 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; and
(d) seize [describe, in reasonable detail, what may be seized]; and
(e) bring and use in or on the place/thing* searched any equipment, to use any equipment found on the place/thing*, and to extract any electricity from the place/thing* to operate the equipment that is reasonable to use in the circumstances, for the purpose of carrying out the entry and search; and
(f) copy any document, or part of any document, that may lawfully be seized; and
(g) take photographs or sound or video recordings of the place/thing* and of any thing found in that place if you have reasonable grounds to believe that the photographs or sound or video recordings may be relevant in any proceedings related to the entry and search; and
101
Schedule 3 Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Form 5—continued
(h) do the following in a manner and for a duration that is reasonable for the purposes of carrying out the search: (i) secure the place/thing* searched, or any area
within that place/thing*, or any thing found within that place/thing*:
(ii) exclude any person from that place/thing*, or from any areawithin the place/thing*, or give any other reasonable direction to that person if you have reasonable grounds to believe that the per- son will obstruct or hinder the exercise of your powers under this warrant.
3 A person assisting you is subject to your control and has the power to do any of the following: (a) enter the place/thing* to be searched: (b) while in your company and under your direction, use
reasonable force in respect of any property for the pur- poses of carrying out the entry and search:
(c) search areas within the place/thing* that you determine may lawfully be searched:
(d) seize any thing that you determine may lawfully be seized:
(e) take photographs and sound and video recordings of the place/thing* and things found in the place/thing* if you determine that those things may lawfully be done:
(f) bring in or on to the place/thing* and use any equip- ment, make use of equipment found on the place/thing*, or extract electricity from the place/thing* for the pur- poses of operating the equipment that you determine may lawfully be used:
(g) copy any document, or part of a document, that you determine may lawfully be copied.
4 This warrant may be executed [specify period in accordance with section 134I(4)(g) of the Trade Marks Act 2002] from the date of issue of the warrant.
5 This warrant is subject to the following conditions: [specify any conditions].
102
Reprinted as at 29 April 2013 Trade Marks Regulations 2003
Form 5—continued
6 This warrant may be executed on 1 occasion/[specify number] occasions*.
*Select one.
Date: Signature: Name of issuing officer: (District Court Judge/Justice of the Peace/Community Magis- trate/Registrar of a District Court*) *Select one.
Schedule 3 form 5: inserted, on 7 October 2011, by regulation 7 of the Trade Marks Amendment Regulations 2011 (SR 2011/342).
Marie Shroff, Clerk of the Executive Council.
Issued under the authority of the Acts and Regulations Publication Act 1989. Date of notification in Gazette: 7 August 2003.
103
Notes Trade Marks Regulations 2003 Reprinted as at 29 April 2013
Contents 1 General 2 Status of reprints 3 How reprints are prepared 4 Changes made under section 17C of the Acts and Regulations
Publication Act 1989 5 List of amendments incorporated in this reprint (most recent
first)
Notes
1 General This is a reprint of the Trade Marks Regulations 2003. The reprint incorporates all the amendments to the regulations as at 29 April 2013, as specified in the list of amendments at the end of these notes. Relevant provisions of any amending enactments that contain transitional, savings, or application provisions that cannot be compiled in the reprint are also included, after the principal enactment, in chronological order. For more information, see http://www.pco.parliament.govt.nz/reprints/.
2 Status of reprints Under section 16D of the Acts and Regulations Publication Act 1989, reprints are presumed to correctly state, as at the date of the reprint, the law enacted by the principal enactment and by the amendments to that enactment. This presumption applies even though editorial changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in the reprint. This presumption may be rebutted by producing the official volumes of statutes or statutory regulations in which the prin- cipal enactment and its amendments are contained.
3 How reprints are prepared A number of editorial conventions are followed in the prep- aration of reprints. For example, the enacting words are not included in Acts, and provisions that are repealed or revoked
104
Reprinted as at 29 April 2013 Trade Marks Regulations 2003 Notes
are omitted. For a detailed list of the editorial conventions, see http://www.pco.parliament.govt.nz/editorial-conventions/ or Part 8 of the Tables of New Zealand Acts and Ordinances and Statutory Regulations and Deemed Regulations in Force.
4 Changes made under section 17C of the Acts and Regulations Publication Act 1989 Section 17C of the Acts and Regulations Publication Act 1989 authorises the making of editorial changes in a reprint as set out in sections 17D and 17E of that Act so that, to the extent permitted, the format and style of the reprinted enactment is consistent with current legislative drafting practice. Changes that would alter the effect of the legislation are not permitted. A new format of legislation was introduced on 1 January 2000. Changes to legislative drafting style have also beenmade since 1997, and are ongoing. To the extent permitted by section 17C of the Acts and Regulations Publication Act 1989, all legisla- tion reprinted after 1 January 2000 is in the new format for legislation and reflects current drafting practice at the time of the reprint. In outline, the editorial changes made in reprints under the au- thority of section 17C of the Acts and Regulations Publication Act 1989 are set out below, and they have been applied, where relevant, in the preparation of this reprint: • omission of unnecessary referential words (such as “of
this section” and “of this Act”) • typeface and type size (Times Roman, generally in 11.5
point) • layout of provisions, including:
• indentation • position of section headings (eg, the number and
heading now appear above the section) • format of definitions (eg, the defined term now appears
in bold type, without quotation marks) • format of dates (eg, a date formerly expressed as “the
1st day of January 1999” is now expressed as “1 January 1999”)
105
Notes Trade Marks Regulations 2003 Reprinted as at 29 April 2013
• position of the date of assent (it now appears on the front page of each Act)
• punctuation (eg, colons are not used after definitions) • Parts numbered with roman numerals are replaced with
arabic numerals, and all cross-references are changed accordingly
• case and appearance of letters and words, including: • format of headings (eg, headings where each
word formerly appeared with an initial cap- ital letter followed by small capital letters are amended so that the heading appears in bold, with only the first word (and any proper nouns) appearing with an initial capital letter)
• small capital letters in section and subsection ref- erences are now capital letters
• schedules are renumbered (eg, Schedule 1 replaces First Schedule), and all cross-references are changed accord- ingly
• running heads (the information that appears at the top of each page)
• format of two-column schedules of consequential amendments, and schedules of repeals (eg, they are rearranged into alphabetical order, rather than chrono- logical).
5 List of amendments incorporated in this reprint (most recent first) Trade Marks Amendment Regulations 2013 (SR 2013/49) Trade Marks Amendment Regulations 2012 (SR 2012/336) Trade Marks Amendment Regulations 2011 (SR 2011/342) Trade Marks Amendment Act 2011 (2011 No 71): section 28
12
Wellington, New Zealand: Published under the authority of the New Zealand Government—2013
106