2013/49
Trade Marks Amendment Regulations 2013
Jerry Mateparae, Governor-General
Order in Council
At Wellington this 25th day of March 2013
Present: His Excellency the Governor-General in Council
Pursuant to section 199 of the TradeMarks Act 2002, His Excellency the Governor-General, acting on the advice and with the consent of the Executive Council, makes the following regulations.
Contents Page
1 Title 3 2 Commencement 3 3 Principal regulations 3 4 Regulation 9 amended (Document filed when received 3
in proper form) 5 Regulation 11 amended (Request to amend documents) 4 6 New regulation 11A inserted (Request to amend 4
pleadings) 11A Request to amend pleadings 4
7 Regulation 17 amended (Notice of address or change of 4 address)
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Trade Marks Amendment Regulations 2013 2013/49
8 New regulation 25A inserted (Notice of revocation of 5 authority may be given by agent)
by agent 9 Regulation 26 amended (Commissioner may require 5
parties to attend case management conference) 10 Regulation 27 replaced (Commissioner may give 6
directions)
directions at case management conference 11 Regulation 31 amended (Commissioner may require 7
production of documents)
25A Notice of revocation of authority may be given 5
27 Parties must comply with Commissioner’s 6
12 New regulation 31A and cross-heading inserted 8 Consolidation of proceedings
31A Commissioner may consolidate proceedings 8
file evidence out of time)
permitted out of time
endeavours to reach confidentiality agreement
application for preliminary advice or search of register)
of time to comply)
if required)
if required)
applicant of intention to revoke acceptance)
13 Regulation 32 replaced (Commissioner may extend time) 9 32 Commissioner may extend time 9
14 Regulation 34 replaced (Evidence out of time) 9 34 Evidence out of time 9
15 Regulation 35 amended (Application for permission to 10
16 New regulations 35A to 35C inserted 10 35A Right to file evidence in reply if evidence in chief 10
35B Evidence from another proceeding 10 35C Commissioner may require parties to use best 11
17 Regulation 36 amended (Vexatious applications) 11 18 Regulation 38 amended (Information required for 11
19 Regulation 62 amended (Applicant may request extension 11
20 Regulation 68 replaced (Commissioner must hold hearing 11
68 Commissioner must hold hearing 11 21 Regulation 70 replaced (Commissioner must hold hearing 11
70 Commissioner must hold hearing 12 22 Regulation 71 amended (Commissioner must notify 12
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23 Regulation 72 replaced (Commissioner must hold hearing 12 if required) 72 Commissioner must hold hearing 12
24 Regulation 75 amended (Time for filing notice of 12 opposition)
25 Regulation 96 amended (Owner or licensee may oppose 12 revocation by filing counter-statement and evidence of use)
26 Regulation 98 amended (Applicant for revocation for 12 non-use must file evidence)
27 Regulation 101 amended (Owner or licensee may oppose 13 revocation by filing counter-statement)
28 Regulation 108 amended (Owner may oppose application 13 for declaration of invalidity by filing counter-statement)
29 Regulation 122 amended (Form of hearing) 13 30 Regulation 126 amended (Hearing fee) 13 31 Regulation 129 amended (Additional contents of the 13
register) 32 Regulation 131 amended (Certified copy of entry in 14
register) 33 Regulation 146 amended (Information required for 14
application to register title to trade mark)
Regulations 1 Title
These regulations are the Trade Marks Amendment Regula- tions 2013.
2 Commencement These regulations come into force on 29 April 2013.
3 Principal regulations These regulations amend the Trade Marks Regulations 2003 (the principal regulations).
4 Regulation 9 amended (Document filed when received in proper form) In regulation 9(2)(c), after “fee”, insert “, if any”.
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5 Regulation 11 amended (Request to amend documents) After regulation 11(2), insert:
“(3) A request to amend a document that is a pleading within the meaning of regulation 11A(1) must comply with this regula- tion and regulation 11A.”
6 New regulation 11A inserted (Request to amend pleadings) After regulation 11, insert:
“11A Request to amend pleadings “(1) In this regulation, pleading means—
“(a) a notice of opposition; or “(b) an application for rectification or revocation, declar-
ation of invalidity, cancellation, or alteration; or “(c) a counter-statement.
“(2) A request under section 194 of the Act to amend a pleading must, in addition to complying with regulation 11, be made prior to the hearing to which the pleading relates.
“(3) If a request to amend a pleading is made,— “(a) the Commissioner must, on receipt of the request, notify
the opposite party of the request; and “(b) the opposite party maymake submissions on the request
within a time specified by the Commissioner; and “(c) the Commissioner must, after considering those sub-
missions (if any), notify the parties of the decision that the Commissioner intends to make on the request.
“(4) If the Commissioner intends to allow an amendment to a pleading described in subclause (1)(a) or (b), the Commis- sioner must give the opposite party an opportunity to file, within a time specified by the Commissioner, an amended counter-statement.”
7 Regulation 17 amended (Notice of address or change of address)
(1) In regulation 17(b), delete “; and”. (2) Revoke regulation 17(c).
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8 New regulation 25A inserted (Notice of revocation of authority may be given by agent) After regulation 25, insert:
“25A Notice of revocation of authority may be given by agent “(1) An agent (A) of a principal (X) may give written notice to the
Commissioner of the revocation of A’s authority as X’s agent. “(2) The notice must be signed by the agent and contain the infor-
mation described in regulation 25(3)(a) to (d). “(3) Notice to the Commissioner of the revocation by the agent of
the agent’s authority is effective— “(a) if it complies with this regulation; and “(b) when it is received by the Commissioner.”
9 Regulation 26 amended (Commissioner may require parties to attend case management conference) Replace regulation 26(1) with:
“(1) At any stage in a proceeding, the Commissioner may, for the purpose of securing the just, speedy, and inexpensive deter- mination of the proceeding,— “(a) require the parties to attend a case management confer-
ence to review the proceeding and the steps that have been or must still be taken; and
“(b) give directions at the case management conference that are consistent with the Act and these regulations.
“(1A) Without limiting the generality of the directions that may be given under subclause (1)(b), the Commissioner may— “(a) fix the time by which a step in the proceeding must be
taken; and “(b) specify the steps that must be taken to prepare the pro-
ceeding for a hearing; and “(c) direct how the hearing of the proceeding is to be con-
ducted; and “(d) in accordance with regulation 35C, require parties to
use their best endeavours to agree on how confidential information is to be treated.”
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10 Regulation 27 replaced (Commissioner may give directions) Replace regulation 27 with:
“27 Parties must comply with Commissioner’s directions at case management conference
“(1) All parties to a proceeding must comply with the directions given by the Commissioner at a case management conference.
“(2) If a party (party A) persistently or repeatedly fails to com- ply with a direction given by the Commissioner at a case management conference (persistent or repeated non-com- pliance),— “(a) the Commissioner must, as soon as practicable,—
“(i) request party A to provide an explanation for the party’s persistent or repeated non-compliance to the Commissioner and to the opposite party within a time specified by the Commissioner; and
“(ii) in that request, advise party A of the effect of subclause (5); and
“(b) the opposite party may provide comments on the ex- planation to the Commissioner within a time specified by the Commissioner; and
“(c) after considering the explanation (if any) and comments from the opposite party (if any), the Commissioner must— “(i) consider whether party A has a reasonable excuse
for the party’s persistent or repeated non-compli- ance; and
“(ii) notify both parties of the decision that the Com- missioner intends to make.
“(3) The notification referred to in subclause (2)(c)(ii) must also— “(a) advise the parties that either party may require a hear-
ing; and “(b) specify a period during which a party may require a
hearing, being a period of not less than 10 working days after the party has received the notification.
“(4) The Commissionermust, as soon as practicable, hold a hearing if a party requires it, and in that case the Commissioner must make a decision only after holding a hearing.
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“(5) If the Commissioner’s decision is that party A has not satisfied the Commissioner that the party has a reasonable excuse for the party’s persistent or repeated non-compliance,— “(a) the Commissioner must notify both parties of the deci-
sion as soon as practicable; and “(b) party A must not take any further step in the proceeding
on and from the date of the notification. “(6) For the purpose of subclause (2), it is irrelevant that a failure
by a party to comply with a direction is different in any way from a previous or subsequent failure by the party to comply with that direction.”
11 Regulation 31 amended (Commissioner may require production of documents)
(1) In regulation 31(1), replace “to—”, with “to do either of the following things within a time specified by the Commis- sioner:”.
(2) After regulation 31(2), insert: “(3) If a party (party A) persistently or repeatedly fails to com-
ply with a notice given or direction made by the Commis- sioner under subclause (1) (persistent or repeated non-com- pliance),— “(a) the Commissioner must, as soon as practicable,—
“(i) request party A to provide an explanation for the party’s persistent or repeated non-compliance to the Commissioner and to the opposite party within a time specified by the Commissioner; and
“(ii) in that request, advise party A of the effect of subclause (6); and
“(b) the opposite party may provide comments on the ex- planation to the Commissioner within a time specified by the Commissioner; and
“(c) after considering the explanation (if any) and comments from the opposite party (if any), the Commissioner must— “(i) consider whether party A has a reasonable excuse
for the party’s persistent or repeated non-compli- ance; and
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“(ii) notify both parties of the decision that the Com- missioner intends to make.
“(4) The notification referred to in subclause (3)(c)(ii) must also— “(a) advise the parties that either party may require a hear-
ing; and “(b) specify a period during which a party may require a
hearing, being a period of not less than 10 working days after the party has received the notification.
“(5) The Commissionermust, as soon as practicable, hold a hearing if a party requires it, and in that case, the Commissioner must make a decision only after holding a hearing.
“(6) If the Commissioner’s decision is that party A has not satisfied the Commissioner that the party has a reasonable excuse for the party’s persistent or repeated non-compliance,— “(a) the Commissioner must notify both parties of the deci-
sion as soon as practicable; and “(b) party A must not take any further step in the proceeding
on and from the date of the notification. “(7) For the purpose of subclause (3), it is irrelevant that a failure
by a party to comply with a notice or direction is different in any way from a previous or subsequent failure by the party to comply with that notice or direction.”
12 New regulation 31A and cross-heading inserted After regulation 31, insert:
“Consolidation of proceedings “31A Commissioner may consolidate proceedings
The Commissioner may require that 2 or more proceedings be consolidated on terms that the Commissioner thinks just, or may require them to be heard at the same time or one after the other, or may require any of them to be halted until after the determination of any other of them, if the Commissioner is satisfied— “(a) that a common question of law or fact arises in both or
all of them; or “(b) that the proceedings relate to—
“(i) identical trade marks; or “(ii) trade marks with the same, or related, owners; or
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“(c) that for any other reason it is desirable to require con- solidation of proceedings under this regulation.
“Compare: 1908 No 89 Schedule 2 rr 10.12, 10.13”.
13 Regulation 32 replaced (Commissioner may extend time) Replace regulation 32 with:
“32 Commissioner may extend time “(1) The Commissioner may, except where these regulations stipu-
late that time must not be extended, extend the time specified by these regulations for a step to be taken for a period not ex- ceeding 3 months if the Commissioner is satisfied that the ex- tension is reasonable in the circumstances.
“(2) The Commissioner may, except where these regulations stipu- late that time must not be extended, extend the time speci- fied by these regulations for a step to be taken for any period (whether or not in addition to the period specified in subclause (1)) specified by the Commissioner if the Commissioner is satisfied that there are genuine and exceptional circumstances that justify the extension.
“(3) In extending the time for a step to be taken, the Commissioner may stipulate the terms and conditions on which the extension is granted.
“(4) If more than 1 extension is granted under subclause (1) in re- lation to a step to be taken, the total period of those extensions must not exceed 3 months.”
14 Regulation 34 replaced (Evidence out of time) Replace regulation 34 with:
“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:
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“(e) an application for cancellation or alteration of a regis- tration.
“(2) A party to a proceeding must not file evidence after the pre- scribed time unless the party has applied to the Commissioner for permission to file it and the Commissioner allows it.
“(3) The Commissioner may allow the evidence to be filed only if— “(a) the Commissioner considers that there are genuine
and exceptional circumstances that justify filing the evidence; or
“(b) the evidence could not have been filed earlier. “(4) In this regulation, prescribed timemeans, in relation to a pro-
ceeding to which this regulation applies, the time prescribed in these regulations by which the evidence or type of evidence must be filed.”
15 Regulation 35 amended (Application for permission to file evidence out of time)
(1) In regulation 35(2)(c), after “evidence”, insert “and whether it is evidence in chief or evidence strictly in reply”.
(2) Replace regulation 35(6) with: “(6) The Commissionermust, as soon as practicable, hold a hearing
if the applicant requests it unless regulation 122(3) applies.”
16 New regulations 35A to 35C inserted After regulation 35, insert:
“35A Right to file evidence in reply if evidence in chief permitted out of time If a party is permitted under regulations 34 and 35 to file evi- dence in chief out of time, the opposite party may file evidence strictly in reply within 1 month after the date of being notified by the Commissioner that the evidence out of time will be ad- mitted in the proceeding.
“35B Evidence from another proceeding “(1) The Commissioner may in a proceeding, at the request of a
party to the proceeding, accept evidence that the party has filed with the Commissioner in an earlier or existing proceeding.
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“(2) Any evidence that is accepted for filing under subclause (1) does not have to comply with regulation 5(c).
“35C Commissioner may require parties to use best endeavours to reach confidentiality agreement The Commissioner may require the parties to a proceeding to use their best endeavours— “(a) to agree on how evidence that is considered confiden-
tial (whether by the party filing the evidence or by the Commissioner) is to be treated in the proceeding; and
“(b) to reach an agreement within a time specified by the Commissioner.”
17
“(4)
Regulation 36 amended (Vexatious applications) Replace regulation 36(4) with: The Commissionermust, as soon as practicable, hold a hearing if a party requires it, unless regulation 122(3) applies.”
18 Regulation 38 amended (Information required for application for preliminary advice or search of register) In regulation 38(c), after “services”, insert “and the class of goods or services”.
19 Regulation 62 amended (Applicant may request extension of time to comply) Revoke regulation 62(3A).
20
“68
Regulation 68 replaced (Commissioner must hold hearing if required) Replace regulation 68 with: Commissioner must hold hearing TheCommissionermust, as soon as practicable, hold a hearing if the applicant requires it unless regulation 122(3) applies.”
21 Regulation 70 replaced (Commissioner must hold hearing if required) Replace regulation 70 with:
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“70 Commissioner must hold hearing TheCommissionermust, as soon as practicable, hold a hearing if the applicant requires it unless regulation 122(3) applies.”
22 Regulation 71 amended (Commissioner must notify applicant of intention to revoke acceptance) In regulation 71(2)(d), replace “subject” with “, subject”.
23 Regulation 72 replaced (Commissioner must hold hearing if required) Replace regulation 72 with:
“72 Commissioner must hold hearing TheCommissionermust, as soon as practicable, hold a hearing if the applicant requires it unless regulation 122(3) applies.”
24 Regulation 75 amended (Time for filing notice of opposition) Replace regulation 75(3) with:
“(3) The Commissioner must not extend the deadline if the request for extension is received after the deadline has expired.”
25 Regulation 96 amended (Owner or licensee may oppose revocation by filing counter-statement and evidence of use) Replace regulation 96(2) with:
“(2) If the owner or licensee does not, within the period specified, file the counter-statement and, if applicable, evidence of use of the mark or of the special circumstances, the Commissioner must determine the application on the documents filed by the applicant.”
26 Regulation 98 amended (Applicant for revocation for non-use must file evidence) In regulation 98(1), delete “, if any,”.
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27 Regulation 101 amended (Owner or licensee may oppose revocation by filing counter-statement) In regulation 101(1), replace “owner or licensee received the application” with “application is sent by the Commissioner”.
28 Regulation 108 amended (Owner may oppose application for declaration of invalidity by filing counter-statement) In regulation 108(1), replace “is sent” with “has been sent”.
29 Regulation 122 amended (Form of hearing) (1) Replace regulation 122(1)(b) with:
“(b) a hearing by submissions, that is, the consideration by the Commissioner of written submissions made by a party without an appearance; or
“(c) a hearing on the papers, that is, a review of all the docu- ments already submitted in the proceeding.”
(2) Replace regulation 122(2) with: “(2) A partymay, subject to subclause (3), elect whether to be heard
by appearance, by submissions, or on the papers. “(3) If the Commissioner considers that a party has persistently or
repeatedly failed, without reasonable excuse, to attend a hear- ing or to agree to a hearing date, the Commissioner may, in his or her discretion,— “(a) direct a hearing on the papers; or “(b) treat the request for a hearing as withdrawn.”
30 Regulation 126 amended (Hearing fee) After regulation 126(2), insert:
“(2A) In the case of a hearing required under regulation 123, the fee must accompany the filing of the notice of requirement to be heard.”
31 Regulation 129 amended (Additional contents of the register)
(1) In the heading to regulation 129, delete “the”. (2) Replace regulation 129(e) with:
“(e) where applicable, a statement that the trade mark was registered on—
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“(i) the basis of evidence of use or distinctiveness; or “(ii) the basis of honest concurrent use with another
registration or application that has priority:”.
32 Regulation 131 amended (Certified copy of entry in register) In regulation 131(2)(c), after “fee”, insert “, if any”.
33 Regulation 146 amended (Information required for application to register title to trade mark) Revoke regulation 146(1)(l).
Michael Webster, for Clerk of the Executive Council.
Explanatory note This note is not part of the regulations, but is intended to indicate their general effect. These regulations, which amend the Trade Marks Regulations 2003 (the principal regulations), come into force on 29 April 2013. These regulations amend the principal regulations to (among other things)— • provide a separate power for the Commissioner of Trade
Marks to allow an amendment to pleadings and set out the process by which a party may request to amend pleadings (see regulation 6):
• enable an agent of a principal to give the Commissioner notice of revocation of the agent’s authority (see regulation 8):
• provide guidance on the kinds of directions that the Commis- sioner may give at a case management conference (see regu- lation 9):
• provide that a party must not take any further step in the pro- ceeding if the party has persistently or repeatedly failed, with- out reasonable excuse, to comply with a direction given by the Commissioner at a case management conference, or a written
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2013/49 Trade Marks Amendment Regulations 2013 Explanatory note
notice of the Commissioner requiring documents to be filed or provided to the other parties (see regulations 10 and 11):
• enable the Commissioner to consolidate 2 ormore proceedings (see regulation 12):
• replace the Commissioner’s power to extend the time for a step to be taken with a power to grant 2 types of extension (see regulation 13):
• extend the application of provisions relating to evidence out of time and clarify when evidence in a proceeding may be filed out of time (see regulation 14):
• allow the Commissioner to accept, at the request of a party to the proceeding, evidence from another proceeding (see regu- lation 16, new regulation 35B):
• enable the Commissioner to require parties to a proceeding to use their best endeavours to agree on how evidence considered to be confidential is to be treated in the proceeding (see regu- lation 16, new regulation 35C):
• provide that the form of hearing before the Commissioner in- cludes a hearing on the papers (see regulation 29):
• enable the Commissioner to direct a hearing on the papers or treat the request for a hearing as withdrawn, if certain circum- stances apply (see regulation 29):
• provide for additional matters that must be entered on the register for each trade mark (see regulation 31):
• make minor and consequential amendments.
Issued under the authority of the Acts and Regulations Publication Act 1989. Date of notification in Gazette: 28 March 2013. These regulations are administered by the Ministry of Business, Innovation, and Employment.
Wellington, New Zealand: Published under the authority of the New Zealand Government—2013
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