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Trade Marks Regulations 2003 (reprint as at 01 January 2007), New Zealand

Back Superseded Text  Go to latest Version in WIPO Lex
Details Details Year of Version 2007 Dates Entry into force: August 20, 2003 Adopted: August 4, 2003 Type of Text Implementing Rules/Regulations Subject Matter Trademarks, Enforcement of IP and Related Laws, IP Regulatory Body Notes This consolidated version of the Trade Marks Regulations 2003 incorporates all the amendments up to January 1, 2007.
For the list of amendments, see 'Notes' section to the Regulations on page 76.

Available Materials
Main Text(s) Related Text(s)
Main text(s) Main text(s) English Trade Marks Regulations 2003 (reprint as at 01 January 2007)        

Reprint as at 1 January 2007

Trade Marks Regulations 2003

(SR 2003/187)

Silvia Cartwright, Governor-General

Order in Council

At Wellington this 4th day of August 2003

Present: Her Excellency the Governor-General in Council

Pursuantto section199 oftheTradeMarksAct2002,HerExcellency the Governor-General, acting on the advice and with the consent of the Executive Council, makes the following regulations.

Contents

Page 1 Title 10

Note

Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this reprint.

Ageneraloutlineofthesechangesissetoutinthenotesattheendofthisreprint,togetherwith other explanatory material about this reprint.

These regulationsare administered by the Ministry of Economic Development.

1

2 Commencement 11 3 Interpretation 11

Part 1 Applications, notices, and requests to Commissioner

Documents

4 Documents must be in English or Māori 12 5 Form of documents filed in proceeding 12 6 Signatures 12 7 Electronic documents 13

Filing documents

8 Place where documents may be filed 13 9 Document filed when received in proper form 13 10 Filing date 14

Amendment of documents

11 Request to amend documents 14

Notice of application to court

12 Notice to Commissioner of application to court 14

Part 2 Addresses

13 Notification of address for service 15 14 Notification of business or residential address 15 15 Notification of communication address 15 16 Change of address 15 17 Notice of address or change of address 16 18 Sufficiency of address 16

Part 3 Agents

19 Definition of agent 16 20 Agent may act on behalf of principal for purposes of 16 regulations 21 Commissioner may serve and give notices to agent 16 22 Principal of agent must file authority with Commissioner 17 in certain cases 23 Commissioner may refuse to recognise person as agent 17 24 Commissioner must notify refusal to recognise 18 25 Notice to Commissioner of revocation or alteration of 18 authority

Reprinted as at1 January 2007 Trade Marks Regulations 2003
Part 4 Commissioner’s control of proceedings
Case management
26 27 Commissioner may require parties to attend case management conference Commissioner may give directions 19 19
Halt in proceedings
28 Commissioner may halt proceeding 19
Parties
29 30 Substitution of parties Intervention by third party 19 20
Production of documents
31 Commissioner may require production of documents 21
Extension of time
32 Commissioner may extend time 21
Evidence
33 34 35 Partyfilingevidencemustcopyevidencetooppositeparty Evidence out of time Application for permission to file evidence out of time 21 21 22
Vexatious applications
36 Vexatious applications 23
Part 5 Application for preliminary advice or for search of register
37 38 39 40 Application for preliminary advice or for search of register Information required for application for preliminary advice or search of register Application for preliminary advice or search of register for goods and services in more than 1 class Refund of fee if identical or similar trade mark subsequently identified 24 24 24 24

Part 6 Application for registration of trade mark

Requirements for application

41 Mandatory requirements for application for registration 25 42 Information required in application for registration on 25 filing 43 Additional classes may be added after filing 25 44 Information that must be supplied before acceptance of 26 application 45 Commissioner may request further information 27

Claim for convention priority

46 Claim for convention priority must be made when 27 application filed 47 Information required for claim for convention priority 27

Registration of trade mark including name or description that may vary in use

48 Registration of trade mark including name or description 28 that may vary in use

Division

49 Division of trade mark application 28 50 Application for division 28 51 Information required for application for division 28 52 Effect of division 29 53 Division instead of striking out 29

Merger

54 When merger is allowed 29 55 Application for merger 30 56 Information required for application for merger 30

Application for registration of certification trade mark

57 Requirements for certification trade mark application 30 58 Applicant may modify documents 30

Application for registration of collective trade mark

59 Requirements for collective trade mark application 31

Application for registration when owner or applicant dies

60 Application for registration without production of letters 31 of administration or probate

Reprinted as at1 January 2007 Trade Marks Regulations 2003
Part 7 Procedure after application for registration filed
Non-compliance
61 62 63 64 Deadline for response to notice of non-compliance Applicant may request extension of time to comply Applicant must notify Commissioner of related proceeding Applicant must notify Commissioner of outcome of related proceeding 32 32 33 33
Withdrawal of application for registration
65 Notification of withdrawal of application for registration 33
Alteration of application for registration
66 67 Request for alteration of application Commissioner must notify applicant of intention to reject alteration 34 34
68 Commissioner must hold hearing if required 34
Rejection of application for registration
69 70 Commissioner must notify applicant of intention to reject application Commissioner must hold hearing if required 35 35
Revocation of acceptance
71 72 Commissioner mustnotifyapplicant of intention to revoke acceptance Commissioner must hold hearing if required 35 36
Part 8 Opposition to application for registration
Notice of opposition
73 74 75 76 77 78 Requirements for notice of opposition Information required in notice of opposition Time for filing notice of opposition Notice of opposition sent in time if all parties agree Commissioner must send copy of notice to applicant for registration Commissioner must notify each opponent that notice of opposition filed 36 36 36 37 37 37
Counter-statement
79 Time for sending counter-statement 37
5

80 Information required in counter-statement 37 81 Commissioner must send copy of counter-statement to 38 opponent

Evidence

82 Opponent must file evidence 38 83 Discontinuance of opposition 38 84 Applicant may file evidence 39 85 Evidence in reply 39

Part 9 Rectification

86 Application for rectification by Commissioner 39 87 Information required for application for rectification 39

Opposition to rectification

88 Owner may oppose rectification 40 89 Requirements for counter-statement to application for 40 rectification

Evidence

90 Applicant for rectification must file evidence 40 91 Discontinuance of application 41 92 Owner may file evidence 41 93 Applicant’s evidence in reply 41

Part 10 Revocation

Application to Commissioner for revocation

94 Application to Commissioner for revocation 41 95 Information required for application for revocation 42

Opposition to application for revocation for non-use

96 Owner or licensee may oppose revocation by filing 42 counter-statement and evidence of use 97 Requirements for counter-statement to application for 43 revocation for non-use

Evidence

98 Applicant for revocation for non-use must file evidence 43 99 Owner or licensee may file evidence 44 100 Applicant may file evidence in reply 44

Opposition to application for revocation on grounds other than non-use

101 Owner or licensee may oppose revocation by filing 44 counter-statement

102 Requirements for counter-statement to application for 45 revocation on grounds other than non-use

Evidence

103 Applicant for revocation on grounds other than non-use 45 must file evidence

104 Person opposing may file evidence in support of 46 registration

105 Applicant may file evidence in reply 46

Part 11 Invalidity

Application to Commissioner for declaration for invalidity

106 Application to Commissioner for declaration of invalidity 46

107 Information required for application for declaration of 46 invalidity

Opposition to application for declaration of invalidity

108 Owner may oppose application for declaration of 47 invalidity by filing counter-statement

109 Requirements for counter-statement to application for 47 declaration of invalidity

Evidence

110 Applicantfordeclarationofinvaliditymustfileevidence 48 111 Owner may file evidence 48 112 Applicant may file evidence in reply 48

Part 12 Cancellation or alteration

Voluntary cancellation

113 Voluntary cancellation 49

Application by aggrieved person for cancellation or alteration of registration

114 Application by aggrieved person for cancellation or 49 alteration

115 Information required for application for cancellation or 50 alteration

Opposition to cancellation or alteration

116 Owner may oppose cancellation or alteration 50 117 Requirements for counter-statement to application for 50 cancellation or alteration

Evidence

118 Applicantforcancellationoralterationmustfileevidence 51 119 Discontinuance of application 51 120 Owner may file evidence 51 121 Applicant’s evidence in reply 52

Part 13 Hearings

122 Form of hearing 52 123 Hearing before exercise of Commissioner’s discretion 52 124 Hearing in certain proceedings 53 125 Notice of hearing by appearance 53 126 Hearing fee 53 127 Venue for hearing by appearance 54 128 Conduct of hearing by appearance 54

Part 14 Registration

General

129 Additional contents of the register 54 130 Certificate of registration 55 131 Certified copy of entry in register 55

Renewal of registration

132 Notice of expiry 56 133 Application for renewal 56

Restoration to register

134 Commissioner may specify conditions for restoration to 57 register

Alteration of register

135 Request for alteration of owner’s or licensee’s name or 57 address 136 Request to strike out goods or services, or classes of 57 goods or services 137 Request for entry of memorandum on register 58

Reprinted as at1 January 2007 Trade Marks Regulations 2003
Voluntary disclaimer
138 Notice of voluntary disclaimer of trade mark by owner 58
Part 15 Application for conversion of specification
139 140 141 142 Application for conversion of specification Information required for application for conversion Applicant may nominate registration in additional classes Proposed form of conversion 59 59 59 59
Part 16
Assignment or transmission
Commissioner’s certificate
143 144 Request for Commissioner’s certificate Information that must be contained in request for certificate 60 60
145 146 Application to register title to trade mark Information required for application to register title to trade mark 61 61
Part 17
Licensees
Registration of licensees
147 148 Application for registration of licensee Information required for application for registration of licensee 62 62
Alteration of registration of licensee
149 150 Application for alteration of registration of licensee Information required for application for alteration of registration of licensee 62 63
Cancellation of registration of licensee
151 152 153 154 155 Application for cancellation of registration of licensee Information required for application for cancellation of registration of licensee Owner must send licensee copy of application to cancel Intervention by owner or licensee Commissioner’s powers on application for cancellation or alteration of registration of licensee 63 63 64 64 64

Part 18 Border protection measures

156 Form of section 137 notice 65 157 Evidence in support of claim 65 158 Notice of assignment, transmission, and other matters 65 159 Security and indemnity 65 160 Disposal of forfeited goods 66

Part 19 Miscellaneous

161 Advertisement by Commissioner 66 162 Commissioner must notify decision 66 163 Commissionermustgivereasonsfordecisionifrequired 67 164 Commissioner may waive requirement for information 67

Part 20 Revocation of regulations

165 Trade Marks Regulations 1954 revoked 67 166 Trade Marks (Border Protection and Transitional 67 Applications) Regulations 1994 revoked

Part 21 Fees

167 Amount of fees 67 168 Commissioner may refuse to take step before fee paid 68 169 Requirement that prescribed fee accompany document 68 to be filed 170 Form of payment 68 171 Currency 68

Schedule 1 69 Fees

Schedule 2 70 Form of notice under section 137 of Trade Marks Act 2002

Regulations 1 Title

These regulations are the Trade Marks Regulations 2003.

2 Commencement

These regulations come into force on 20 August 2003.

3 Interpretation

In these regulations, unless the contextotherwise requires,— Act means the Trade Marks Act 2002 address for service means—

(a)
a business or residential address in New Zealand; or
(b)
a post office box in New Zealand; or
(c)
a document exchange box in New Zealand agent has the meaning set out in regulation 19 business or residential address means a physical street ad
dress, whether in or outside New Zealand; and does not include—
(a)
an electronic address:
(b)
a post office box:
(c)
a document exchange box

class meansaclassofgoodsorservicesaccordingtotheNice Classification CommissionermeanstheCommissionerofTradeMarks;and

includes an Assistant Commissioner of Trade Marks

communicationaddressmeansanyaddressinoroutsideNew Zealand; and includes an electronic address filingdate meansthedatewhenadocumentisreceivedatthe

Patent Office or an office approved by the Commissioner, as the case may be

hearing has the meaning set out in regulation 122 Nice Classification means the ninth edition of the Nice Classification published on 1 January 2007 under the Nice AgreementConcerningtheInternationalClassificationofGoodsand Services for the Purposes of Registration of Marks

proceeding includesanapplication, request, orhearingin ac

cordance with these regulations register means the register of trade marks kept under section 181 of the Act. Regulation 3 Nice Classification : amended, on 1 January 2007, by regulation

4 of the Trade Marks Amendment Regulations 2006 (SR 2006/360).

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 Commissioner must be in English or Māori.
(2)
TheCommissionermayrequireapersonwhofilesadocument inMāori to provide theCommissioner with a verified 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 or Māori (for example, a convention document), but the document must be accompanied by a verified translation.

5 Form of documents filed in proceeding A document, including written evidence, or bundle of documents filed with the Commissioner in a proceeding under the Act or these regulations must contain the following information:

(a)
thenameandaddressforserviceofthepersonfilingthe document:
(b)
if that person has an agent, the agent’s name:
(c)
thenumberofthetrademarkapplicationorregistration that is the subject of the proceeding.

6 Signatures

(1)
Inthefollowingcases,adocumentmustbesignedforthepurposes 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 listofthecurrentmembersofthepartnershiphas been filed with the Commissioner; and
(ii)
besignedbyaqualifiedpartneroranyotherpersonwhohas,totheCommissioner’ssatisfaction, 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 Commissioner, authority to sign:
(c)
in the case of an unincorporated association, the document 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 as if that Act were in force.
(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.

7 Electronic documents

(1)
Anyrequirementintheseregulationsthatadocumentmustbe inwritingissatisfiedifthedocumentcomplieswith section18 of the Electronic Transactions Act 2002 as if that Act were in force.
(2)
Anyrequirementintheseregulationsthatadocumentmustbe filed, served, or sent is satisfied if the document is given in accordancewith section20 oftheElectronicTransactionsAct 2002 as if that Act were in force.

Filing documents

8 Place where documents may be filed AdocumentthatmustbefiledwiththeCommissionermaybe filed at—

(a)
the Patent Office; or
(b)
other offices approved by the Commissioner.

9 Document filed when received in proper form

(1)
AdocumentisfiledwiththeCommissionerwhenitisreceived in proper form.
(2)
A document is in proper form only if—
(a)
it is legible; and
(b)
it complies with the requirements of these regulations; and
(c)
it is accompanied by the prescribed fee.
(3)
A document that is filed electronically is received according to the rules contained in sections 11 and 13 of the Electronic Transactions Act 2002 as if that Act were in force.

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)
thenameandaddressforserviceofthepersonrequesting 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.

Notice of application to court

12 Notice to Commissioner of application to court

(1)
Apersonwhoappliestothecourtunderthefollowingsections 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)
Assoonaspracticableafterthecourthasdecidedtheapplication,thepartywhomadetheapplicationmustnotifytheCom
missioner of the result, and, if an order has been sealed, provide the Commissioner with a copy of the order.
(3)
The Commissioner may, if the Commissioner thinks it appropriate, publish any order made by the court on an application or an appeal under the Act.

Part 2 Addresses 13 Notification of address for service

Thefollowingpersonsmustfileanoticeofaddressforservice with the Commissioner:

(a)
anapplicantinanapplicationmadeinaccordancewith these regulations:
(b)
the owner of a trade mark registered under the Act:
(c)
the licensee of a trade mark registered under the Act:
(d)
any party to a proceeding under these regulations.

14 Notification of business or residential address Thefollowingpersons must fileanoticeofabusiness or residential address with the Commissioner:

(a)
anapplicantinanapplicationmadeinaccordancewith these regulations:
(b)
the owner of a trade mark registered under the Act:
(c)
the licensee of a trade mark registered under the Act:
(d)
an agent.

15 Notification of communication address A person may file a notice of a communication address with theCommissionerforthepurposeofreceivinggeneralcorrespondence.

16 Change of address Apersonwhohasfiledanoticeofanaddressforservice,businessorresidentialaddress,orcommunicationaddressmust,if the address has changed, as soon as practicable, file a notice of change of address.

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; and
(c)
if a trade mark will be affected by a change of address, the number of that trade mark.

18 Sufficiency of address

An address that is notified to the Commissioner under these regulations must be sufficiently detailed to enable the Commissioner 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)
whoisauthorisedbytheagent’sprincipal(X)toactfor X in any proceeding in accordance with these regulationsortotakeanysteponX’sbehalfundertheseregulations; and
(b)
forwhomrecognitionhasnotbeenrefusedbytheCom missioner under regulation 23.

20 Agent may act on behalf of principal for purposes of regulations

(1)
Subjecttothescopeoftheagent’sauthority,anagentmayact for the agent’s principal (X) in any proceeding in accordance withtheseregulationsortakeanystep(includingsignatureof 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 regulations be signed by the principal and not by the agent.

21 Commissioner may serve and give notices to agent

(1)
TheCommissionersatisfiesanyrequirementundertheseregulations of service on, notice to, or correspondence with a per
sonbyservingon,givingnoticeto,orcorrespondingwiththat person’s agent.
(2)
Subclause (1) does not apply to the extent that any written authorityfiledwiththeCommissionerbytheagent’sprincipal expressly excludes the authority of the agent for any of the matters specified in subclause (1).

22 Principal of agent must file authority with Commissioner in certain cases

(1)
The principal (X) of an agent (A) must file with the Commissioner—
(a)
a written authority in respect of A if the Commissioner requires it,withinthe time specifiedby Commissioner:
(b)
if X appoints a new agent in place of A, a written authority in respect of the new agent, as soon as practicable after the new agent is appointed.
(2)
The authority must—
(a)
be signed by X, and not by any agent; and
(b)
contain the information set out in subclause (3).
(3)
The authority 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 the trade mark:
(d)
a statement of any limitation on the authority of the agent to act for X.

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 Office; 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 Law Practitioners Act 1982, and has not been re stored to the roll; or
(d)
who is suspended from practice as a barrister or solicitor; or
(e)
who has been convicted of an offence specified in Part 10 (except sections293to305 )oftheCrimesAct1961 or who has been convicted of an equivalent offence in another country.

24 Commissioner must notify refusal to recognise

IftheCommissionerrefusestorecogniseapersonasanagent, theCommissionermust,assoonaspracticable,notifythatperson 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 noticetotheCommissioneroftherevocationoralterationofthe 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)
themattersforwhichAcontinuestohaveauthority.
(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.

Part 4 Commissioner’s control of proceedings

Case management

26 (1) (2) (3) Commissioner may require parties to attend case management conference At any stage in a proceeding the Commissioner may require thepartiestoattendaconferencetoreviewtheproceedingand the steps that have been or must still be taken. The Commissioner must give each party notice of the conference at least 10 working days before the conference. The parties may attend in person or by a telecommunication link that is acceptable to the Commissioner.
27 Commissioner may give directions In the course of a case management conference, the Commissioner may give directions for the future conduct of the proceeding that are consistent with the Act and these regulations.
Halt in proceedings
28 (1) Commissioner may halt proceeding The Commissioner may halt a proceeding, if the Commissioner thinks it appropriate, on the application of a party or on the Commissioner’s own initiative.
(2) TheCommissionermayhalttheproceedingfortheperiodand on the terms and conditions that the Commissioner thinks appropriate, but must not halt the proceeding for more than 6 months.
(3) (4) The Commissioner may halt the proceeding for further periods, but on each occasion for no more than 6 months. The Commissioner may at any stage, while the proceeding is halted, recommence the proceeding.
Parties
29 (1) Substitution of parties A notice to the Commissioner by a person (S) claiming to be substituted as an applicant under section 192 of the Act or an
19

opponentunder section 193,asthe casemaybe,mustinclude 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)
a description or representation (including the number or numbers) of the trade mark or marks to which the application or opposition relates:
(e)
a statement describing how the right or interest on which S relies for substitution is vested in S.

(2) The notice must be signed by S.

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 CommissionerthatThasasufficientinterest,tointerveneina 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)
thenatureoftheapplicationtowhichT’sclaimforintervention relates:
(d)
adescriptionorrepresentation(includingthenumberor numbers)ofthetrademarkormarkstowhichtheclaim for intervention relates:
(e)
a statement describing T’s interest in the proceeding.
(3)
The notice must be signed by T.
(4)
TheCommissionermayallowTtointerveneonthetermsand conditions(includinganundertakingastocosts)thattheCommissioner thinks appropriate.

Production of documents

31 Commissioner may require production of documents

(1)
AtanystageinaproceedingundertheActortheseregulations, the Commissioner may require a party by notice in writing or by direction made at a case management conference to—
(a)
file copies of documents with the Commissioner:
(b)
provide other parties to the proceeding with copies of documents.
(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.

Extension of time

32 Commissioner may extend time

(1)
The Commissioner may, if satisfied in a particular case that there are genuine and exceptional circumstances that justify an extension of time, extend the time specified by these regulations for a step to be taken, except where these regulations stipulate that time must not be extended.
(2)
Inextendingthetimeforasteptobetaken,theCommissioner maystipulatethetermsandconditionsonwhichtheextension is granted.

Evidence

33 Partyfilingevidencemustcopyevidencetooppositeparty A party who files evidence with the Commissioner under the Act or these regulations must, as soon as practicable, send a copyoftheevidencetotheoppositepartyandanypartyintervening.

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:
(d)
an application for a declaration of the invalidity of the registration of a trade mark.
(2)
A party to a proceeding may not file evidence after the evidence in reply has been filed, unless that party has applied to the Commissioner for permission to file it and the Commissioner allows it.
(3)
The Commissioner must 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.

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)
besignedbythepartyapplyingforpermission(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:
(d)
an explanation why the evidence could not have been filed earlier:
(e)
anyothergroundorgroundsformakingtheapplication.
(3)
The Commissioner must notify the opposite party of the application,andtheoppositepartymaymakesubmissionstothe CommissionerwithinthetimespecifiedbytheCommissioner.
(4)
TheCommissionermustnotifythepartiesofthedecisionthat the Commissioner intends to make on the application.
(5)
The notification must—
(a)
specify the ground or grounds on which the Commissioner intends to reject or accept the application; and
(b)
advise the parties that either party may require a hearing; 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)
advisethepartiesthattheCommissionerwilldecidethe application at the end of that period if a party has not required a hearing.
(6)
TheCommissionermust,assoonaspracticable,holdahearing if a party requires it, and in that case must decide the application only after holding a hearing.

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 vexatious, 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 considers 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 theapplicanthasreceivedthenotificationfortheapplicant 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)
TheCommissionermust,assoonaspracticable,holdahearing if the applicant requires it.

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

Anapplicationforpreliminaryadviceorasearchoftheregister must contain the following information:

(a)
the applicant’s name and communication address:
(b)
a clear representation of the trade mark:
(c)
astatementofthegoodsorservicesforwhichitisproposed 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.

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 preliminaryadviceorasearchoftheregisterforatrademarkforgoods 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—

(a)
the applicant, relying on the result of a search, applied for registration of a trade mark within 3 months of receiving 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)
theapplicantwithdrawstheapplicationforregistration.

Part 6 Applicationforregistrationoftrademark

Requirements for application

41 Mandatory requirements for application for registration

(1)
Anapplicationforregistrationofatrademarkthatissubmitted 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 invalid and must not be given a filing date.
(3)
Anapplicationthatcomplieswithsubclause(1)mustbegiven a filing date and may be examined.

42 Information required in application for registration on filing

Theapplicationmustcontainthe followinginformationwhen it is filed:

(a)
the applicant’s name and address for service or, in the caseofjointapplicants,thenameofeachapplicantand an address for service:
(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 required.

43 Additional classes may be added after filing

(1)
Anapplicantforregistrationofatrademarkmayapplytothe Commissioner for a class or classes to be added after the application has been filed.
(2)
The Commissioner may allow the addition of a class if—
(a)
theapplicationforadditionismadewithin1monthafter the application for registration is filed; and
(b)
theapplicationisaccompaniedbythefeeprescribedfor an application to register in 1 class; and
(c)
the goods or services to which the additional class or classes relate are within the original specification.
(3)
TheCommissionermustnotallowanapplicationforaddition if the applicant has previously deleted the goods or services to which the additional class relates from the application for registration.
(4)
The Commissioner must not extend the deadline in subclause (2)(a).

44 Information that must be supplied before acceptance of application

Anapplicantmustsupplythefollowinginformationbeforethe application can be accepted, and may supply it after filing the application:

(a)
the applicant’s business or residential address, if this is different from the address for service; and
(b)
whethertheapplicationisforacertificationoracollective trade mark; and
(c)
the class or classes of the Nice Classification 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)
atranslationofanyforeignwordsinthetrademark;and
(g)
ifthetrademarkisacolourorcolours,adescriptionacceptable to the Commissioner of the colour or colours; and
(h)
if the trade mark is limited as to colour, a description acceptabletotheCommissionerofthecolourorcolours in the trade mark; and
(i)
iftheapplicanthasmadeaclaimforconventionpriority, the information specified in regulation 47; and
(j)
astatementbytheapplicantthatthetrademarkisbeing used or is proposed to be used.

45 Commissioner may request further information

The Commissioner may request further information from an applicantthatwillassistintheexaminationoftheapplication.

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.
(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 specifyingtowhichofthemarksintheseriestheclaimfor convention priority relates.
(2)
TheCommissionermayrequireanapplicanttofile,withinthe time specified by the Commissioner, a certified copy of the convention document.
(3)
The Commissioner may refuse an applicant convention priority if the applicant does not comply with a request by the Commissioner under subclause (2).

Registration of trade mark including name ordescription that may vary in use

48 Registration of trade mark including name or description that may vary in use

(1)
TheCommissionermayregisteratrademarkthatincludesthe name ordescription of goods and services for those andother goodsandservices,ifthenameordescriptionmayvaryinuse.
(2)
The Commissioner must 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)
The undertaking must be entered on the register.
(4)
If the applicant does not give an undertaking as required, the Commissionermayrefusetoregisterthetrademarkforgoods and services that are not the named or described goods and services.

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 information:

(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)
inthecaseofdivisionofgoodsorservices,alistofthe goods or services to be divided out:
(g)
if a notice of opposition to the application for registration has been filed with the Commissioner, a statement that the opponent has consented to the application for division.

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 registration:
(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 itemsfrom the specification,applyfordivision in respect of those items, provided that there is no outstanding application fee for the class or classes in which the items divided out are to be included.

Merger

54 When merger is allowed

(1)
Anapplicantforregistrationofatrademark,oranownerofa trademark,asthecasemaybe,mayapplyforthemergerof—
(a)
2 or more applications; or
(b)
2 or more registrations.
(2)
TheCommissionermaymergetheapplicationsorregistrations if they—
(a)
are for the same trade mark; and
(b)
havethesamefilingdatesand,ifapplicable,sameconvention priority dates; and
(c)
have the same status, for example, accepted for registration, 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 Regulations 1954; or
(ii)
the Nice Classification; or

(iii) thesamepreviouseditionoftheNiceClassification, as the case may be.

55 Application for merger

An application for merger must—

(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 information:

(a)
the applicant’s name and address for service:
(b)
if the applicant has an agent, the agent’s name:
(c)
thenumberofeachapplicationorregistrationsoughtto be merged.

Application for registration of certificationtrade mark

57 Requirements for certification trade mark application

(1)
An application for registration of a certification trade mark must complywith the requirements of regulations 41, 42,and
44 .
(2)
Within 6 months after the application is filed, the applicant mustfile,inaformacceptabletotheCommissioner,draftregulations governing the use of the trade mark.

58 Applicant may modify documents Afterthe documents referred toinregulation 57(2)havebeen filed, and within 12 months after the application for registration was filed, the applicant may modify the documents in response to any advice the Commissioner may give as to their suitability.

Application for registration of collective trademark

59 Requirements for collective trade mark application An application for registration of a collective trade mark must—

(a)
complywiththerequirementsof regulations41 , 42 ,and 44 ; and
(b)
contain a declaration that the applicant is a collective association as defined in section 5(1) of the Act.

Application for registration when owner orapplicant dies

60 Application for registration without production of letters of administration or probate

(1)
Anapplicationunder section52(1) (whichinthisregulationis 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 address for service:
(c)
the name of the deceased owner or deceased applicant for registration:
(d)
ifthatpersonhadanagent,theagent’snameandaddress for service:
(e)
a representation or description of each trade mark to which the section 52 application relates:
(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 application:
(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)
Beforeregisteringtheapplicantastheownerofthetrademark, theCommissionermayrequiretheapplicanttoprovidefurther evidence that the Commissioner considers necessary.

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,theCommissionermayspecifyadeadlineofnotlessthan 12monthsaftertheapplicationforregistrationwasfiledfor—
(a)
responding to the notice; or
(b)
amending the application.
(2)
Aftereachresponseoramendmentbytheapplicant,theCommissionermayissueafurthernoticeiftheapplicationstilldoes not comply with the requirements of the Act, and on each occasionmayextendthedeadlinespecifiedundersubclause(1).

62 Applicant may request extension of time to comply

(1)
Before the deadline for a response to a notice of non-compliance has expired, the applicant for registration may apply to the Commissioner for an extension.
(2)
The Commissioner may allow an extension, in the Commissioner’s discretion, and may allow subsequent extensions.
(3)
TheCommissionermustnotallowanextensioniftheapplication for extension is made after the deadline has expired.
(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.

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 Commissioner if the application is awaiting the outcome of—
(a)
an opposition proceeding in respect of a prior application; or
(b)
cancellation,revocation,orinvalidityproceedingsinrespect of a prior registration.
(2)
TheapplicantmustnotifytheCommissionerbeforetheexpiry 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 proceeding.
(2)
Onnoticeoftheoutcomeoftheproceeding,theCommissioner must extend the deadline for compliance by a period that the Commissioner considers reasonable.

Withdrawal of application for registration

65 Notificationofwithdrawalofapplicationforregistration

(1)
Anapplicantforregistrationofatrademarkmaywithdrawthe application by notifying the Commissioner in writing.
(2)
The notification of withdrawal must contain the following information:
(a)
the applicant’s name:
(b)
if the applicant has an agent, the agent’s name:
(c)
a description or representation of the trade mark:
(d)
the application number.
(3)
The notification must be signed by the applicant.

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
registrationofatrademarkforthealterationoftheapplication
must—
(a) be in writing; and
(b) contain the information set out in subclause (2).
(c) be signed by the applicant.
(2) Therequestforalterationmustcontainthefollowinginforma
tion:
(a) the applicant’s name:
(b) if the applicant has an agent, the agent’s name:
(c) a description or representation of the trade mark:
(d) the application number:
(e) the correction to be made to the application.
67 Commissioner must notify applicant of intention to reject
alteration
(1) The Commissioner must notify the applicant if the Commis
sionerintendstorejecttherequestforalterationontheground
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
ofthenotificationforthe applicanttorequireahearing;
and
(d) advise the applicant that the Commissioner will reject
the request at the end of that period if the applicant has
not required a hearing.
68 Commissioner must hold hearing if required
The Commissioner must, as soon as practicable, hold a hear
ing if the applicant requires it, and in that case must decide

whether to reject the request for alteration only after hearing the applicant.

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
(c)
specify a period of not less than 1 month after the applicant hasreceived thenotification fortheapplicantto require a hearing; and
(d)
advise the applicant that the Commissioner will reject the application at the end of that period if the applicant has not required a hearing.

70 Commissioner must hold hearing if required

TheCommissionermust,assoonaspracticable,holdahearing iftheapplicantrequiresit,andinthatcasemustdecidewhether to reject the application for registration only after hearing the applicant.

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 applicant hasreceived thenotification fortheapplicantto require a hearing; and
(d)
advisetheapplicantthattheCommissionerwillrevoke acceptance at theend of that periodif the applicant has not required a hearing.

72 Commissioner must hold hearing if required TheCommissionermust,assoonaspracticable,holdahearing iftheapplicantrequiresit,andinthatcasemustdecidewhether to revoke acceptance of the application only after hearing the applicant.

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)
a description or representation of the trade mark:
(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.

75 Time for filing notice of opposition

(1)
Apartywhoopposesanapplicationforregistrationofatrade mark must file a notice of opposition with the Commissioner
within3monthsafterthedatewhenacceptanceofregistration was first advertised.
(2)
The Commissioner may, if requested, extend the deadline for filing a notice of opposition—
(a)
byupto1month,withouttheapplicant’sconsent;and
(b)
by up to 2 months, with the applicant’s consent.
(3)
The Commissioner must not extend the deadline after the deadline has expired.

76 Notice of opposition sent in time if all parties agree AnoticeofoppositionthathasbeensenttotheCommissioner within 6 months after the application for registration in question was filed is deemed to have been sent within the time for sendingthenoticeiftheapplicantandtheopponenteachconsent.

77 Commissioner must send copy of notice to applicant for registration The Commissioner must, as soon as practicable after a notice ofoppositionisfiled,sendacopyofthenoticetotheapplicant 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,theCommissionermust,assoonaspracticableafter eachnoticeofoppositionisfiled,notifyeachopponentthatthe 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 theCommissionerwithin2monthsaftertheapplicantreceived the notice.

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)
abriefstatementofthegroundsonwhichtheapplicant relies in support of the application for registration.
(2)
The counter-statement must be signed by the applicant.

37

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-statement to the opponent.

Evidence

82 Opponent must file evidence

(1)
Within 2 months after the opponent (O) has received a copy of the counter-statement, 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)
notifytheCommissionerthatOwithdrawstheapplication.
(2)
The Commissioner must notify the applicant as soon as practicableafterOhastakenoneofthestepsundersubclause(1)(b) or (c).

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 opposition.

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 applicanthasfiledevidence,fileevidencestrictlyinreplywithin 1 month after the opponent has received a copy of the applicant’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 Anapplicationforrectificationmustcontainthefollowinginformation:

(a)
the applicant’s name and address for service:
(b)
if the applicant has an agent, the agent’s name:
(c)
a description or representation of the trade mark to which the application relates:
(d)
thenumberoftheregistrationofthetrademarktowhich 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:
(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.

Opposition to rectification

88 Owner may oppose rectification

(1)
The owner of a trade mark in respect of which another person has applied for rectification may oppose the application by filing a counter-statement with the Commissioner within 2 months after receiving a copy of the application.
(2)
Iftheownerdoesnotfileacounter-statementwithin2months, theCommissionermustdeterminetheapplicationonthedocuments filed by the applicant.

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,eachassertionmadeinthegroundsforrectification:
(d)
a brief statement of the facts on which the owner relies in support of the 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.

Evidence

90 Applicant for rectification must file evidence

(1)
Within 2 months after receiving a copy of the counter-statement, 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)
notifytheCommissionerthatAwithdrawstheapplication.
(2)
The Commissioner must notify the owner as soon as practicable after A has taken one of the steps under subclause (1)(b) or (c).

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 application.

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 applicantdoesnotintendtofileevidenceinsupportofthe application.

93 Applicant’s evidence in reply An applicant for rectification 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.

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 information:

(a)
the applicant’s name and address for service:
(b)
if the applicant has an agent, the agent’s name:
(c)
a description or representation of the trade mark to which the application relates:
(d)
thenumberoftheregistrationofthetrademarktowhich the application for revocation relates:
(e)
the class or classes or goods or services to which the application relates:
(f)
the grounds for revocation:
(g)
astatementofthebasisonwhichtheapplicantclaimsto beapersonaggrievedforthepurposesof section 65(1) of the Act.

Opposition to application for revocation for non-use

96 Owner or licensee may oppose revocation by filing counter-statement and evidence of use

(1)
Theownerorlicenseeofatrademarkthatisthesubjectofan application for revocation for non-use may oppose the applicationbyfilingthefollowingdocumentswithin2monthsafter the owner or licensee received 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, filethecounter-statementand,ifapplicable,evidenceofuseof themark,theCommissionermustdeterminetheapplicationon the documents filed by the applicant.
(3)
The Commissioner must, as soon as practicable, send a copy ofthecounter-statementandanysupportingdocumentstothe applicant.

97 Requirements for counter-statement to application for revocation for non-use

(1)
Acounter-statementtoanapplicationforrevocationofatrade markongroundsofnon-usemustcontainthefollowinginformation:
(a)
the name and address for service of the owner or licensee opposing the application:
(b)
iftheownerorlicenseehasanagent,theagent’sname:
(c)
aresponsetotheapplicant’sgroundsforrevocation,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:
(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 receiving a copy of the counter-statementandtheevidence,ifany, ofuseofthetrademarkorspe cial circumstances 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)
notifytheCommissionerthatAwithdrawstheapplication.
(2)
TheCommissionermustnotifytheownerorlicenseeopposing theapplication assoonaspracticableafterAhastaken 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 application.

99 Owner or licensee may file evidence The owner or licensee opposing an application for revocation fornon-usemay, iftheapplicanthasfiledevidenceinsupport of the application, file evidence in support of the registration within2monthsaftertheownerorlicenseehasreceivedacopy of the applicant’s evidence.

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 hasreceivedacopyoftheevidenceinsupportoftheowneror licensee.

Opposition to application for revocation ongrounds 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 theownerorlicenseereceivedtheapplication,acounter-state ment 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.

102 Requirements for counter-statement to application for revocation on grounds other than non-use

(1)
Acounter-statementtoanapplicationforrevocationofatrade mark on grounds other than non-use must contain the following information:
(a)
the name and address for service of the owner or licensee opposing the application:
(b)
iftheownerorlicenseehasanagent,theagent’sname:
(c)
aresponsetotheapplicant’sgroundsforrevocation,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.
(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 receiving a copy of the counter-statement, 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)
notifytheCommissionerthatAwithdrawstheapplication.
(2)
TheCommissionermustnotifytheownerorlicenseeopposing theapplication assoonaspracticableafterAhastaken 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 application.

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 evidenceinsupportoftheapplication,fileevidenceinsupport ofregistrationwithin2monthsaftertheownerorlicenseehas 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 applicanthasreceivedacopyoftheevidenceinsupportofthe owner or licensee.

Part 11 Invalidity

Application to Commissioner for declarationfor 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)
containtheinformationspecifiedin regulation107 ;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 Anapplicationforadeclarationofinvaliditymustcontainthe following information:

(a)
the applicant’s name and address for service:
(b)
if the applicant has an agent, the agent’s name:
(c)
a description or representation of the trade mark to which the application relates:
(d)
thenumberoftheregistrationofthetrademarktowhich 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:
(g)
astatementofthebasisonwhichtheapplicantclaimsto beapersonaggrievedforthepurposesof section 73(1) of the Act.

Opposition to application for declaration ofinvalidity

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 oppose the application by filing, within 2 months after the ownerreceivedtheapplication,acounter-statementthatcom plies with regulation 109.
(2)
If the owner does not, within the period specified, file the counter-statement, 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 to the applicant.

109 Requirements for counter-statement to application for declaration of invalidity

(1)
Acounter-statementtoanapplicationtotheCommissionerfor adeclarationofinvaliditymustcontainthefollowinginformation:
(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 ofinvalidity,byadmitting,denying,orclaiminglackof knowledgeof,eachassertionmadeinthegroundsfora 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 receiving a copy of the counter-statement, 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)
notifytheCommissionerthatAwithdrawstheapplication.
(2)
TheCommissionermustnotifytheowneropposingtheapplicationassoonaspracticableafterAhastakenoneofthesteps 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 application.

111 Owner may file evidence The owner opposing an application for a declaration of invalidity 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 strictlyinreplywithin1monthaftertheapplicanthasreceived a copy of the owner’s evidence.

Part 12 Cancellation or alteration

Voluntary cancellation

113 Voluntary cancellation

(1)
Theownerofatrademarkwhovoluntarilycancelsregistration under section61 oftheActmustgivenoticeofthecancellation to the Commissioner.
(2)
The notice 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)
arepresentationordescriptionofthetrademark:

(iii) the owner’s name:

(iv)
if the owner has an agent, the agent’s name:
(v)
ifregistrationiscancelledinpartonly,alistofthe goods, services, or classes for whichregistration is to be cancelled:
(vi)
if registration is cancelled in part, a copy of the amended specification.

Application by aggrieved person forcancellation or alteration of registration

114 Application by aggrieved person for cancellation or alteration

(1)
An application to the Commissioner for cancellation or alterationofregistrationunder section62 , section63 ,or section64 of the Act must—
(a)
be in writing; and
(b)
containtheinformationspecifiedin regulation115 ;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)
a description or representation of the trade mark to which the application relates:
(d)
thenumberoftheregistrationofthetrademarktowhich the application relates:
(e)
the class or classes or goods or services to which the application relates:
(f)
theextenttowhichcancellationoralterationissought:
(g)
the grounds for cancellation or alteration:
(h)
a statement of the basis on which the applicant claims to be an aggrieved person.

Opposition to cancellation or alteration

116 Owner may oppose cancellation or alteration

(1)
Theownerofatrademarkinrespectofwhichanotherperson 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 Commissionerwithin2monthsafterreceivingacopyoftheapplication.
(2)
Iftheownerdoesnotfileacounter-statementwithin2months, theCommissionermustdeterminetheapplicationonthedocuments filed by the applicant.

117 Requirements for counter-statement to application for cancellation or alteration

(1)
Acounter-statementtoanapplicationforcancellationoralteration 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 oralteration,byadmitting,denying,orclaiminglackof
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.

Evidence

118 Applicantforcancellationoralterationmustfileevidence

(1)
Within 2 months after receiving a copy of the counter-statement, 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)
notifytheCommissionerthatAwithdrawstheapplication.
(2)
TheCommissionermustnotifytheowneropposingtheapplicationassoonaspracticableafterAhastakenoneofthesteps under subclause (1)(b) or (c).

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 application.

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 applicantdoesnotintendfilingevidenceinsupportofthe 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 1monthaftertheapplicanthasreceivedacopyoftheowner’s evidence.

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 Commissioner; or
(b)
a hearing by submissions, that is, the consideration by the Commissioner of written submissions made by a party without an appearance.
(2)
A party may elect whether to be heard by appearance or submissions.

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 beheard beforethepower is exercised, filewith the Commissioner a notice of a requirement to be heard.
(2)
The notice must—
(a)
containY’snameandaddressforservice,and,ifYhas an agent, the agent’s name:
(b)
statethematterinrespectofwhichahearingisrequired:
(c)
be signed by Y.
(3)
Ymustfilethenoticewithin10workingdaysofthereceiptby YofnotificationbytheCommissionerofthedecisionthatthe 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)
anapplicationfortherevocationoftheregistrationofa trade mark:
(d)
anapplicationforadeclarationthattheregistrationofa trade mark is invalid:
(e)
an application for cancellation or alteration of registration.
(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 appearance 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)
thedateandvenuehavebeendeterminedataprehearing conference; or
(b)
the parties waive compliance with subclause (1); or
(c)
intheCommissioner’sopinion,noticeof1monthisnot 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)
inthecaseofahearingbysubmissions,whentheparty files the submissions with the Commissioner.
(3)
The Commissioner must refund a hearing fee paid by a party whowithdrawsfromthehearingiftheCommissionerreceives notice of withdrawal not less than 5 working days before the date set for the hearing.

127 Venue for hearing by appearance

(1)
If 1 party is in Wellington, the hearing must be held in Wellington or the place agreed by all the parties as the venue for the hearing.
(2)
IfnopartyisinWellington,theCommissionermustdetermine where the hearing will be held.
(3)
TheCommissionermayrequirethepartyorpartiesconcerned 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 appearance must be conducted.
(2)
Members of the public may attend a hearing by appearance, unless the Commissioner decides that it is not appropriate.

Part 14 Registration

General

129 Additional contents of the register The following matters, additional to the matters specified in section182(a)to(f) oftheAct,mustbeenteredontheregister 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 editionoftheNiceClassificationorthescheduleunderthe Trade Marks Regulations 1954 that has been used for classification of the specifications:
(d)
iftheregistrationismadewiththeconsentoftheowner of another registered trade mark or an applicant for registration,—
(i)
an entry of “By consent”; and
(ii)
theregistrationnumberoftheothertrademarkor the application for registration, as the case may be:
(e)
where applicable, a statement that the trade mark was registeredonthebasisofevidenceofuseordistinctiveness:
(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.

130 Certificate of registration

(1)
The certificate of registration of a trade mark issued by the Commissioner must contain the following information:
(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)
theclassorclassesinwhichthetrademarkisregistered:
(e)
thegoodsandservicesforwhichthetrademarkisregistered.
(2)
The certificate of registration may contain any other information that the Commissioner thinks appropriate.

131 Certified copy of entry in register

(1)
TheCommissionermust,ontherequestofanyperson,provide that person with any of the following documents:
(a)
a certified copy of any entry in the register of trade marks:
(b)
acertifiedcopyof,oranextractfrom,anyregister,publicdocument,orrecordthatmustbekeptundertheAct or these regulations.
(2)
A request for a document referred to in subclause (1) must—
(a)
be in writing; and
(b)
containthenameandcommunicationaddressoftheperson making the request; and
(c)
be accompanied by the prescribed fee.

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)
notlaterthan2monthsbeforetheexpiryofregistration.
(3)
Inadditiontothemattersspecifiedin section59(2) oftheAct, the notice must state the following:
(a)
registration will expire if it is not renewed:
(b)
the last day when it can be renewed:
(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)
a representation or description of the trade mark:
(c)
the owner’s name and address for service:
(d)
if the owner has an agent, the agent’s name:
(e)
thenameandcommunicationaddressofthepersonpaying the renewal fee:
(f)
if the trade mark is registered in more than 1 class, details of the class or classes for which registration is to be renewed.

Restoration to register

134 Commissioner may specify conditions for restoration to register

(1)
Forrestorationofatrademarktotheregister,theownerofthe trade mark must, within 12 months after it has been removed fromtheregister,complywithanyconditionsspecifiedbythe 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 or licensee’s name or address

A request under section 78(a) of the Act for the alteration of the name or address of the owner or licensee of a trade mark must—

(a)
be in writing; and
(b)
besignedbytheownerorthelicensee,asthecasemay be; and
(c)
contain the following information:
(i)
the trade mark’s registration number:
(ii)
arepresentationordescriptionofthetrademark:

(iii) the owner’s or licensee’s name:

(iv)
if the owner or the licensee has an agent, the agent’s name:
(v)
the new name or address to be entered on the register.

136 Requesttostrikeoutgoodsorservices,orclassesofgoods 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 services, 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)
arepresentationordescriptionofthetrademark:

57

(iii) the owner’s name:

(iv)
if the owner has an agent, the agent’s name:
(v)
alistofthegoods,services,orclassestobestruck out:
(vi)
ifpartofaclassistobestruckout,acopyofthe amended specification.

137 Request for entry of memorandum on register A request under section 78(c) of the Act for the entry 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)
arepresentationordescriptionofthetrademark:

(iii) the owner’s name:

(iv)
if the owner has an agent, the agent’s name:
(v)
the memorandum to be entered on the register.

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 information:
(a)
the owner’s name:
(b)
if the owner has an agent, the agent’s name:
(c)
a description or representation of the trade mark to which the disclaimer relates:
(d)
the application number or registration number of the trade mark to which the disclaimer relates:
(e)
if the owner disclaims, a description of that part of the trade mark that is disclaimed.
(3)
The notice must be signed by the owner.

Part 15 Applicationforconversionofspecification

139 Application for conversion of specification

Theownerofatrademarkregisteredwithaspecificationclassified under Schedule 3 or Schedule 4 of the Trade Marks Regulations 1954 or any previous edition of the Nice Classification 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 information:

(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 Applicantmaynominateregistrationinadditionalclasses An applicant for conversion may nominate registration in additionalclassesif goodsor services classifiedin asingleclass under Schedule 3 or Schedule 4 of the Trade Marks Regulations 1954 or any previous edition of the Nice Classification fall into additional classes under the Nice Classification.

142 Proposed form of conversion

(1)
TheCommissionermustnotifyanapplicantforconversionof the proposed form of the conversion.
(2)
TheapplicantmayapplyforahearinginrelationtotheCommissioner’s decision as to the proposed form within 1 month after notification.
(3)
Iftheapplicantdoesnotapplyforahearingwithin1monthof notification, the Commissioner must—
(a)
convert the specification in the proposed form; and
(b)
enter the date of the conversion in the register.

Part 16 Assignment or transmission

Commissioner’s certificate

143 Request for Commissioner’s certificate

A request for the issue of a certificate by the Commissioner under section 81 of the Act must—

(a)
be in writing; and
(b)
containtheinformationspecifiedin regulation144 ;and
(c)
be signed by the person making the request.

144 Information that must be contained in request for certificate

(1)
A request for the issue of a certificate by the Commissioner under section 81 of the Act must contain the following infor mation:
(a)
the name and communication address of the person making the request:
(b)
thenameandcommunicationaddressoftheperson(Z) to whom it is proposed to assign or transmit the application or trade mark:
(c)
if Z has an agent, the agent’s name:
(d)
a description or representation of the trade mark to whichtheproposedassignmentortransmissionrelates:
(e)
whethertheproposedassignmentortransmissionisfull or partial:
(f)
the class or classes that are proposed to be assigned or transmitted:
(g)
theapplicationorregistrationnumberofthetrademark:
(h)
whether it is proposed that the registration of any licensees be cancelled or amended:
(i)
a statement (which must be verified by statutory declaration,iftheCommissionerrequiresit)settingoutthe circumstances of the proposed assignment or transmission:
(j)
in the case of the proposed assignment or transmission of some only of the goods or services within a classification, a statement of the goods or services assigned or transmitted.
(2)
The Commissioner may require the person requesting a certificate to provide any additional information and documents that the Commissioner considers necessary.

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 thenameoftheapplicantonanapplicationforregistration,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)
Anapplicationunder section82(2) oftheActmustcontainthe following information:
(a)
thenameoftheperson(C)whoassignedortransmitted the trade mark:
(b)
if C has an agent, the agent’s name:
(c)
the name, address for service, and business or residential address of the person (D) to whom C assigned or transmitted the trade mark:
(d)
if D has an agent, the agent’s name:
(e)
adescriptionorrepresentationofthetrademarkthathas been assigned or transmitted:
(f)
whethertheassignmentortransmissionwasfullorpartial:
(g)
the date on which the assignment or transmission became 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 statementofthegoodsorservicesassignedortransmitted:
(j)
theapplicationorregistrationnumberofthetrademark:
(k)
a copy of the document of assignment or transmission orotherdocumentsacceptabletotheCommissionerthat are proof of D’s title to the trade mark:
(l)
iftheassignmentortransmissionhasresultedinthecancellationoramendmentoftheregistrationofalicensee, astatementthatthelicenseehasbeennotifiedoftheassignment or transmission.
(2)
The Commissioner may require an applicant under section 82(2) of the Act to provide any additional information and documents that the Commissioner considers necessary.

Part 17 Licensees

Registration of licensees

147 Application for registration of licensee Anapplicationfortheregistrationofalicenseeofatrademark under section 83 of the Act must—

(a)
be in writing; and
(b)
containtheinformationspecifiedin regulation148 ;and
(c)
beaccompaniedbythestatutorydeclarationreferredto in section 83(2)(b) of the Act; and
(d)
be signed by the owner of the trade mark and the proposed licensee.

148 Information required for application for registration of licensee Anapplicationfortheregistrationofalicenseeofatrademark must contain the following information:

(a)
the licensee’s name, address for service, and business or residential address:
(b)
if the licensee has an agent, the agent’s name:
(c)
thetrademarkforwhichthelicenseeistoberegistered:
(d)
the registration number of the trade mark:
(e)
the goods and services to which the licence relates:
(f)
any conditions relating to the licence.

Alteration of registration of licensee

149 Application for alteration of registration of licensee An application for the alteration of the registration of a li censee of a trade mark under section 86 of the Act must—

(a)
be in writing; and
(b)
containtheinformationspecifiedin regulation150 ;and
(c)
be signed by the owner of the trade mark.

150 Information required for application for alteration of registration of licensee

An application for the alteration of the registration of a licenseeofatrademarkmustcontainthefollowinginformation:

(a)
the licensee’s name:
(b)
if the licensee has an agent, the agent’s name:
(c)
the trade mark for which the licensee is registered:
(d)
the registration number of the trade mark:
(e)
the goods and services for which the licence is to be cancelled:
(f)
the goods and services for which the licence is to continue:
(g)
any proposed alteration of the licence:
(h)
a statement that the owner has notified the licensee of the application.

Cancellation of registration of licensee

151 Application for cancellation of registration of licensee

(1)
An application for the cancellation of the registration of a li censee of a trade mark under section 87 of the Act must—
(a)
be in writing; and
(b)
containtheinformationspecifiedin regulation152 ;and
(c)
be signed by the applicant.
(2)
Inthecaseofanapplicationbyapersonwhoisnottheowner or the licensee of the trade mark, the Commissioner must, as soon as practicable, notify the owner that the application has been filed.

152 Information required for application for cancellation of registration of licensee

An application for the cancellation of the registration of a licenseeofatrademarkmustcontainthefollowinginformation:

(a)
the licensee’s name:
(b)
if the licensee has an agent, the agent’s name:
(c)
the trade mark for which the licensee is registered:
(d)
the registration number of the trade mark:
(e)
if the applicant is not the owner or the licensee, the grounds for cancellation.

153 Owner must send licensee copy of application to cancel

(1)
In the case of an application by the owner (O) of the trade mark to cancel the registration of a licensee, O must as soon as practicable send a copy of the application to that licensee.
(2)
Inthecaseofanapplicationbyapersonwhoisnottheowner, O must notify the licensee of the application as soon as practicable after O has been notified by the Commissioner.

154 Intervention by owner or licensee

(1)
If an application has been made for cancellation or alteration of the registration of the licensee of a trade mark, the owner and the licensee may intervene in the proceeding.
(2)
Theownerorlicenseemustgivewrittennoticeofintervention to the Commissioner,—
(a)
inthecaseoftheowner,within1monthaftertheowner has been notified by the Commissioner of the application:
(b)
in the case of the licensee, within 1 month after the licensee has been notified by the applicant.
(3)
The notice of intervention must include a statement of the grounds for intervening.
(4)
The Commissioner must, as soon as practicable, send a copy of the notice of intervention to every other party to the proceeding.

155 Commissioner’spowersonapplicationforcancellationor alteration of registration of licensee

(1)
Onanapplicationforthecancellationoralterationoftheregistration of a licensee, the Commissioner must—
(a)
allow each party to present evidence in support of that party’s case; and
(b)
ifrequiredbyaparty,holdahearingontheapplication.
(2)
The Commissioner may refuse the application, or may cancel theregistrationsubjecttoanyconditions,amendments,modifications, or limitations that the Commissioner thinks appropriate.

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.

157 Evidence in support of claim

(1)
A person who gives a notice under section 137 must provide evidencetothechief executiveinsupportofthe claimthat an infringingsignisusedon,orinphysicalrelationto,thegoods that are specified in the notice.
(2)
Thechiefexecutivemaydirectthattheevidencemustbeprovided when the notice is given or at any later time.

158 Notice of assignment, transmission, and other matters

A person whohasgiven anoticeundersection 137oftheAct 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 madein the notice.

159 Security and indemnity

(1)
Apersonwhogivesnoticeunder section137 oftheActmust,if requiredby the chief executive, give security oranindemnity 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

65

an indemnity for the amount and on the terms and conditions that the chief executive may decide.

160 Disposal of forfeited goods

(1)
GoodsforfeitedtotheCrownunder section151 or section152 of the Act must be sold, destroyed, or otherwise disposed of in the manner that the chief executive directs.
(2)
However,thechiefexecutivemustnotdirectasteptobetaken 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.

Part 19 Miscellaneous 161 Advertisement by Commissioner

TheCommissionermustadvertiseinformationthatisrequired by the Act to be advertised in the format, manner, and frequency 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)
inthecaseoftheCommissioner’sexerciseofanyother 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 Commissioner; or
(b)
if a person to whom the notice has been sent requires theCommissionertonotifythereasonsforthedecision, when the reasons for the decision are sent by the Commissioner.

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 forthedecision,iftheCommissionerhasnotalreadydoneso.
(2)
Noticethatapersonrequiresthereasonsforadecisionmustbe senttotheCommissionerwithinthetimeforappealingagainst the decision.

164 Commissioner may waive requirement for information

The Commissioner may waive a requirement in these regulations for information to be provided in any proceeding or document if the Commissioner is satisfied that the information 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 continue 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 Applications) 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)
Thefeesprescribedbytheseregulationsareexclusiveofgoods 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.
(2)
The Commissioner may refuse to accept any application, notice,orrequestundertheActortheseregulationsinrespectof 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 documenttobefiledwiththeCommissionerissatisfiediftheparty 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)
AfeepayableundertheActortheseregulationsmustbepaid in a form that is acceptable to the Commissioner.
(2)
The Commissioner must, from time to time, publish a statement of acceptable forms of payment.

171 Currency

All fees must be paid in New Zealand currency.

Schedule 1 r 167 Fees Fee Activity ($)

Request for search advice per class 20.00 Request for preliminary advice per class 20.00 Application to register a trade mark in 1 class 100.00 Renewal of registration of a trade mark in 1 class 250.00 Notice of opposition to registration of a trade mark 300.00 Hearing by Commissioner for each party 750.00 Certificates, certified copies, or extracts from register 30.00 Photocopying — per page (by office) 0.89 Photocopying — per page (self-service) 0.18 Application for declaration of invalidity of registration 300.00

Schedule 2 r 156 Formof noticeundersection137 ofTrade Marks Act 2002

Notice requesting detention of goods infringingregistered trade mark

To the Chief Executive of the New Zealand Customs Service [Insert full name and address of registered owner or registered licensee of trade mark], of .................... is [insert whether registered owner or registered licensee] of trade mark No .....................in Class .....................

A copy of the registration of the mark is attached to this notice. The Chief Executive of the New Zealand Customs Service is requested 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 control of the New Zealand Customs Service. This notice is in forceforthe 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 service of any notice are: Name: ........................................ Business/residential address: ............................................................ Postal Address: ................................................................................. Telephone No: .............................. Facsimile No: .............................. Email: ........................................ Datedthis ..................... dayof ..................... 20...........

[signature]

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.

Trade Marks Amendment Regulations 2006

(SR 2006/360)

Anand Satyanand, Governor-General

Order in Council

At Wellington this 27th day of November 2006

Present: His Excellency the Governor-General in Council

Pursuant to section 199(a) of the Trade Marks Act 2002, His Excellency the Governor-General, acting on the advice and with the consent of the Executive Council, makes the following regulations.

Regulations

1 Title
These regulations are the Trade Marks Amendment Regulations 2006.
2 Commencement
These regulations come into force on 1 January 2007.
5 (1) Transitional provision for applications filed before 1 January 2007 This regulation applies to— (a) an application for registration of a trade mark filed before 1 January 2007; and (b) an action or other matter relating to an application referred to in paragraph (a), whether or not commenced before 1 January 2007.
(2)
For the purposes of clause (1)(b), an action or other matter includes, but is notlimitedto, an applicationunderregulation 43 and the supply of information under regulation 44(c).
(3)
Every application, action, or other matter to which this regulationappliesmust bemade,considered,and determined as if these regulations had not been made.

Diane Morcom, Clerk of the Executive Council.

Date of notification in Gazette: 30 November 2006

Contents

1 General

2 Status of reprints

3 How reprints are prepared

4 Changesmadeundersection17CoftheActsandRegulations 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 at1January2007,asspecifiedinthelistofamendmentsatthe end of these notes.

Relevant provisions of any amending enactments that have yet to come into force or that contain relevant transitional or savingsprovisionsarealsoincluded,aftertheprincipalenactment, in chronological order.

2 Status of reprints

Under section 16D of the Acts and Regulations Publication Act 1989, reprints are presumed to correctly state, as at the dateofthereprint,thelawenactedbytheprincipalenactment 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 volumesofstatutesorstatutoryregulations in whichthe principal enactment and its amendments are contained.

3 How reprints are prepared

A number of editorial conventions are followed in the preparation of reprints. For example, the enacting words are not included in Acts, and provisions that are repealed or revoked 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.

Changes made under section 17C of the Acts and Regulations Publication Act 1989

Section17C oftheActsandRegulationsPublicationAct1989 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 thatwould alter the effect of the legislation are not permitted.

Anewformatoflegislationwasintroducedon1January2000. Changestolegislativedraftingstylehavealsobeenmadesince 1997,andareongoing. Totheextentpermittedbysection17C of the Acts and Regulations Publication Act 1989, all legislation reprinted after 1 January 2000 is in the new format for legislation and reflects current drafting practice at the time of the reprint.

Inoutline,theeditorialchangesmadeinreprintsundertheauthorityof section17C oftheActsandRegulationsPublication Act1989aresetoutbelow,andtheyhavebeenapplied,where relevant, in the preparation of this reprint:

• omission of unnecessary referential words (such as “of this section” and “of this Act”)

  • typefaceandtypesize(TimesRoman,generallyin11.5 point)
    • layout of provisions, including:
      • indentation
      • positionofsectionheadings(eg,thenumberand heading now appear above the section)
  • formatofdefinitions(eg,thedefinedtermnowappears in bold type, without quotation marks)
  • format of dates (eg, a date formerly expressed as “the 1stdayofJanuary1999”isnowexpressedas“1January 1999”)
  • positionofthedateofassent(itnowappearsonthefront page of each Act)
  • punctuation (eg, colons are not used after definitions)
  • Partsnumberedwithromannumeralsarereplacedwith 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 capital 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)
      • smallcapitallettersinsectionandsubsectionreferences are now capital letters
  • schedulesarerenumbered(eg,Schedule1replacesFirst Schedule),andallcross-referencesarechangedaccordingly
  • 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 chronologican( �/span>.

List of amendments incorporated in this reprint (most recent first)

Trade Marks Amendment Regulations 2006 (SR 2006/360)

Wellington, New Zealand: Published under the authority of the New Zealand Government—2009


Legislation Is superseded by (3 text(s)) Is superseded by (3 text(s))
No data available.

WIPO Lex No. NZ097