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New Zealand Legislation: Regulations

Regulations are laws made under Acts

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

Note

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

A general outline of these changes is set out in the notes at the end of this reprint, together with other explanatory material about this reprint.

These regulations are administered by the Ministry of Economic Development.

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

Contents

3 Interpretation

Part 1
Applications, notices, and requests to Commissioner

4 Documents must be in English or Māori

5 Form of documents filed in proceeding

7 Electronic documents

Filing documents

8 Place where documents may be filed

9 Document filed when received in proper form

Amendment of documents

11 Request to amend documents

Notice of application to court

12 Notice to Commissioner of application to court

Part 2
Addresses

13 Notification of address for service

14 Notification of business or residential address

15 Notification of communication address

16 Change of address

17 Notice of address or change of address

18 Sufficiency of address

19 Definition of agent

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

21 Commissioner may serve and give notices to agent

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

23 Commissioner may refuse to recognise person as agent

24 Commissioner must notify refusal to recognise

25 Notice to Commissioner of revocation or alteration of authority

Part 4
Commissioner's control of proceedings

Case management

26 Commissioner may require parties to attend case management conference

27 Commissioner may give directions

Halt in proceedings

28 Commissioner may halt proceeding

29 Substitution of parties

30 Intervention by third party

Production of documents

31 Commissioner may require production of documents

Extension of time

32 Commissioner may extend time

33 Party filing evidence must copy evidence to opposite party

34 Evidence out of time

35 Application for permission to file evidence out of time

Vexatious applications

36 Vexatious applications

Part 5
Application for preliminary advice or for search of register

37 Application for preliminary advice or for search of register

38 Information required for application for preliminary advice or search of register

39 Application for preliminary advice or search of register for goods and services in more than 1 class

40 Refund of fee if identical or similar trade mark subsequently identified

Part 6
Application for registration of trade mark

Requirements for application

41 Mandatory requirements for application for registration

42 Information required in application for registration on filing

43 Additional classes may be added after filing

44 Information that must be supplied before acceptance of application

45 Commissioner may request further information

Claim for convention priority

46 Claim for convention priority must be made when application filed

47 Information required for claim for convention priority

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

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

49 Division of trade mark application

50 Application for division

51 Information required for application for division

52 Effect of division

53 Division instead of striking out

54 When merger is allowed

55 Application for merger

56 Information required for application for merger

Application for registration of certification trade mark

57 Requirements for certification trade mark application

58 Applicant may modify documents

Application for registration of collective trade mark

59 Requirements for collective trade mark application

Application for registration when owner or applicant dies

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

Part 7
Procedure after application for registration filed

61 Deadline for response to notice of non-compliance

62 Applicant may request extension of time to comply

63 Applicant must notify Commissioner of related proceeding

64 Applicant must notify Commissioner of outcome of related proceeding

Withdrawal of application for registration

65 Notification of withdrawal of application for registration

Alteration of application for registration

66 Request for alteration of application

67 Commissioner must notify applicant of intention to reject alteration

68 Commissioner must hold hearing if required

Rejection of application for registration

69 Commissioner must notify applicant of intention to reject application

70 Commissioner must hold hearing if required

Revocation of acceptance

71 Commissioner must notify applicant of intention to revoke acceptance

72 Commissioner must hold hearing if required

Part 8
Opposition to application for registration

Notice of opposition

73 Requirements for notice of opposition

74 Information required in notice of opposition

75 Time for filing notice of opposition

76 Notice of opposition sent in time if all parties agree

77 Commissioner must send copy of notice to applicant for registration

78 Commissioner must notify each opponent that notice of opposition filed

Counter-statement

79 Time for sending counter-statement

80 Information required in counter-statement

81 Commissioner must send copy of counter-statement to opponent

82 Opponent must file evidence

83 Discontinuance of opposition

84 Applicant may file evidence

85 Evidence in reply

Part 9
Rectification

86 Application for rectification by Commissioner

87 Information required for application for rectification

Opposition to rectification

88 Owner may oppose rectification

89 Requirements for counter-statement to application for rectification

90 Applicant for rectification must file evidence

91 Discontinuance of application

92 Owner may file evidence

93 Applicant's evidence in reply

Part 10
Revocation

Application to Commissioner for revocation

94 Application to Commissioner for revocation

95 Information required for application for revocation

Opposition to application for revocation for non-use

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

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

98 Applicant for revocation for non-use must file evidence

99 Owner or licensee may file evidence

100 Applicant may file evidence in reply

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

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

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

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

104 Person opposing may file evidence in support of registration

105 Applicant may file evidence in reply

Part 11
Invalidity

Application to Commissioner for declaration for invalidity

106 Application to Commissioner for declaration of invalidity

107 Information required for application for declaration of invalidity

Opposition to application for declaration of invalidity

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

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

110 Applicant for declaration of invalidity must file evidence

111 Owner may file evidence

112 Applicant may file evidence in reply

Part 12
Cancellation or alteration

Voluntary cancellation

113 Voluntary cancellation

Application by aggrieved person for cancellation or alteration of registration

114 Application by aggrieved person for cancellation or alteration

115 Information required for application for cancellation or alteration

Opposition to cancellation or alteration

116 Owner may oppose cancellation or alteration

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

118 Applicant for cancellation or alteration must file evidence

119 Discontinuance of application

120 Owner may file evidence

121 Applicant's evidence in reply

Part 13
Hearings

122 Form of hearing

123 Hearing before exercise of Commissioner's discretion

124 Hearing in certain proceedings

125 Notice of hearing by appearance

126 Hearing fee

127 Venue for hearing by appearance

128 Conduct of hearing by appearance

Part 14
Registration

129 Additional contents of the register

130 Certificate of registration

131 Certified copy of entry in register

Renewal of registration

132 Notice of expiry

133 Application for renewal

Restoration to register

134 Commissioner may specify conditions for restoration to register

Alteration of register

135 Request for alteration of owner's or licensee's name or address

136 Request to strike out goods or services, or classes of goods or services

137 Request for entry of memorandum on register

Voluntary disclaimer

138 Notice of voluntary disclaimer of trade mark by owner

Part 15
Application for conversion of specification

139 Application for conversion of specification

140 Information required for application for conversion

141 Applicant may nominate registration in additional classes

142 Proposed form of conversion

Part 16
Assignment or transmission

Commissioner's certificate

143 Request for Commissioner's certificate

144 Information that must be contained in request for certificate

145 Application to register title to trade mark

146 Information required for application to register title to trade mark

Part 17
Licensees

Registration of licensees

147 Application for registration of licensee

148 Information required for application for registration of licensee

Alteration of registration of licensee

149 Application for alteration of registration of licensee

150 Information required for application for alteration of registration of licensee

Cancellation of registration of licensee

151 Application for cancellation of registration of licensee

152 Information required for application for cancellation of registration of licensee

153 Owner must send licensee copy of application to cancel

154 Intervention by owner or licensee

155 Commissioner's powers on application for cancellation or alteration of registration of licensee

Part 18
Border protection measures

156 Form of section 137 notice

157 Evidence in support of claim

158 Notice of assignment, transmission, and other matters

159 Security and indemnity

160 Disposal of forfeited goods

Part 19
Miscellaneous

161 Advertisement by Commissioner

162 Commissioner must notify decision

163 Commissioner must give reasons for decision if required

164 Commissioner may waive requirement for information

Part 20
Revocation of regulations

165 Trade Marks Regulations 1954 revoked

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

167 Amount of fees

168 Commissioner may refuse to take step before fee paid

169 Requirement that prescribed fee accompany document to be filed

170 Form of payment

Schedule 1
Fees

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

Gazette information

Trade Marks Amendment Regulations 2006

Regulations