WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO RESTRICTED 
IP/N/I/NZL/T/l 
23 January 1996 
(96-0204) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original: English/anglais/ingtes 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
New Zealand 
Trademarks 
The present document reproduces I the following laws and regulations, as notified by New Zealand under Article 63.2 of the Agreement 
(see document IP/N/lINZLl1): 
the Trade Marks Act 1953 
the Trade Marks Amendment Act 1987 
the Trade Marks Amendment Act 1990 
the Trade Marks Amendment Act 1994 
ConseiI des aspects des droits de propriete 
intellectuelle qui touchent au commerce 2 
60 
78 
79 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA PROPRIETE INTELLECTUELLE 
NOTIFIEES AU TITRE DE L'ARTICLE 63:2 DE L'ACCORD 
Nouvelle-Zelande 
Marques de fabrique ou de commerce 
Le present document contientl les lois et reglementations ci-apres, notifiees par la Nouvelle-Zelande au titre de l'article 63:2 de 
l' Accord (voir le document IP/N/lINZLl1): 
Loi de 1953 sur les marques de fabrique ou de commerce 2 
Loi de 1987 portant modification de la Loi sur les marques de fabrique ou de commerce 60 
Loi de 1990 portant modification de la Loi sur les marques de fabrique ou de commerce 78 
Loi de 1994 portant modification de la Loi sur les marques de fabrique ou de commerce 79 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS DE CONFORMIDAD CON EL PARRAFO 2 
DEL ARTicULO 63 DEL ACUERDO 
Nueva Zelandia 
Marcas de fabrica 0 de comercio 
El presente documento reproduce! las siguientes leyes y reglamentos que han sido notificadas por Nueva Zelandia en cumplimiento 
del parrafo 2 del articulo 63 del Acuerdo (vease el documento IP/NIlINZLl1): 
Ley de Marcas de Fabrica 0 de Comercio, de 1953 
Reforma de la Ley de Marcas de Fabrica 0 de Comercio, de 1987 
Reforma de la Ley de Marcas de Fabrica 0 de Comercio, de 1990 
Reforma de la Ley de Marcas de Fabrica 0 de Comercio, de 1994 
IIn English only/en anglais seulementlen ingtes solamente. 2 
60 
78 
79 IP/NI I/NZL/T 11 
Page 2 
R.S. Vol. 11 563 
1 
REPRINTED ACT 
[WITH AMENDMENTS INCORPORATED] 
TRADE MARKS 
REPRINTED AS ON 31 DECEMBER 1982 
INDEX 
Trade Marks Act 1955 
Merchandise Marks Act 1954: s. 25 (I) Page 
S 
Trade Marks Act CODlInenceHlent Order 11954 (S.R. 1954/225) 
SUlDlDary Proceedings Act 1957: s. 214 (I) 57 (n) 
5 (n) 
48 (n) 
15 (n) Geneva Conventions Act 1958: s. 8 (9) 
DecilDal Currency Act 1964: s. 7 
Estate and Gift Duties Act 1968: s. 100 (6) 
Trade Marks AlDendlDent Act 1972 
Tokelau AlDendlDent Act 1976: s. S (8) 
Trade Marks AlDendIDent Act 1976 
Public Finance Act 1977: s. 114 (6) 
Judicature AlDendIDent Act 1979: s. 12 48 (n)~ 49 (n) 
44 (n) 
58 
56 (n) 
58 
55 (n) 
4 (n)~ 46 (n) 
14 (n) Flags~ ElDblelDS~ and Nantes Protection Act 1981: s. 27 (I) 
In this index U(nF~ o:fter a page number indicates that the enactment is referred to in a note on that 
page. 
ANALYSIS 
Title 
1. Short Title and commencement 
2. Interpretation 
3. Commissioner of Trade Marks 
4. Assistant Commissioners of Trade 
Marks and other officers 
RECISTRA TION, INFRINGEMENT. AND OTHER 
SUBSTANTIVE PROVISIONS 
The Register 
5. The register of trade marks 
Effict cif Registration~ and the Action for 
Infringement 
6. No action for infringement of unregis· 
tered trade mark 
7. Registration to be in respect of particu­
lar goods 
8. Right given by registration in Part A, 
and infringement thereof 
9. Right given by registration in Part B, 
and infringement thereof 
10. Infringement·· by breach of certain 
restrictions 
11. Saving for vested rights 
12. Saving for use of name, address, or 
description of goods 
~D 13. Infringement by use of name of 
company 
Registrability and Validity cif Registration 
14. Distinctiveness requisite for registration 
in Part A 
15. Capability of distinguishing requisite for 
registration in Part B 
16. Prohibition of registration of deceptive, 
etc., matter 
1 7. Prohibition of registration of identical 
and resembling trade marks 
18. Power of Commissioner to refuse cer­
tain applications 
19. Consents required in certain cases 
20. Marks in respect of a class or large 
variety of goods 
21. Restraint on registration of representa­
tion of Royal Anns, ete., as part of 
trade mark 
22. Registration in Part A to be conclusive 
as to validity after 7 years 
23. Registration subject to disclaimer 
24. Words used as name or description of 
an article or substance 
25. Effect of limitation as to colour, and of 
absence thereof IP/N/I/NZL/T/l 
Page 3 
564 
2 Trade Marks R.S. Val. 11 
Procedure for, and Duration cif, Registration 
26. Application for registration 
27. Advertisement and opposition to 
registration 
28. Registration 
29. Duration and renewal of registration 
30. Registration of parts of trade marks and 
of trade marks as a series 
Assignment and Transmission 
31. Powers of, and restrictions on, assign· 
ment and transmission 
32. Certain trade marks to be associated so 
as to be assignable and transmissible 
as a whole only 
33. Power of registered proprietor to assign 
and give receipts 
34. Registration of assignments and 
transmissions 
Use and Non-use 
35. Removal from register and imposltlon 
of limitations on ground of non·use 
36. Defensive registration of well· known 
trade marks 
37. Registered users 
38. Proposed use of trade mark by corpora· 
tion to be constituted, etc. 
39. Use of one of associated or substantially 
identical trade marks equivalent to 
use of another 
40. Use of trade mark for export trade 
Rectification and Correction cif the Register 
4 1. General power to rectifY entries in 
register 
42. Power to expunge or vary registration 
for breach of condition 
43. Entries in register 
44. Correction of errors 
45. Alteration of registered trade mark 
46. Adaptation of entries in register to 
amended or substituted classification 
of goods 
Certification Trade M ariu 
4 7. Certification trade marks 
48. Regulations in respect of certification 
trade marks 
49. Applications for registration of certifi· 
cation trade marks 
50. Advertisement of applications to regis· 
ter certification trade marks 
51. Alteration of regulations in respect of 
certification trade marks 
52. Cancellation or variation of registration 
of certification trade mark 
53. No costs on appeal against refusal to 
certify goods 
54. Certain provisions of Act not to apply 
to certification trade marks. GENERAL 
Powers and Duties cif Commissioner 
55. Preliminary advice by Commissioner as 
to distinctiveness 
56. Hea?ng. befo~e exercise of Commission· 
er s dlscretlon 
57. Lost certificates 
58. Commissioner may dispense with pro· 
duction of probate or letters of 
administration in certain cases 
Legal Proceedings and Appeals 
59. Registration to be prima facie evidence of 
validity 
60. Trade usage, etc., to be considered 
61. Certificate of validity 
62. Costs and security for costs 
63. Costs of Commissioner in proceedings 
before Court 
64. Commissioner's appearance in proceed· 
ings involving rectification 
65. Court's power to review Commissioner's 
decision 
66. Appeals to High Court 
67. Procedure in cases of option to apply to 
Court or COffiIllissioner 
Evidence 
68. !-.10de of giving evidence 
69. Evidence of entries, documents, etc. 
Offences 
70. Falsification of register, etc. 
71. False representation of a trade mark as 
registered 
International Agreements, etc. 
72. Orders in Council as to convention 
countries 
73. International arrangements 
Miscellaneous 
74. Service of notices, etc., by post 
74A. Extension of time 
75. Parties not resident in New Zealand to 
give address for service 
76. Opening and closing of Patent Office 
76A. Closing of Patent Office at short notice 
77. Declaration by person under disability 
78. Change of form of trade connection not 
to be deemed to cause deception 
79. Jointly owned trade marks 
80. Trusts and equities 
8 1. Recognition of agents 
82. Fees 
83. Annual report 
84. Savings in respect of previous Acts 
85. Regulations 
86. Application of Act to Tokelau 
87. Repeals, amendments, and savings 
Schedule IP IN I I/NZL/T 11 
Page 4 
R.S. Vol. 11 Trade Marks Act 1953 
THE TRADE MARKS ACT 1958 
1958, No. 66 565 
3 
An Act to consolidate and atYlend certain enacttnents 
relating to trade tnarks [26 November 1953 
1. Short Title and cotntnencetnent-(l) This Act may be 
cited as the Trade Marks Act 1 953. 
(2) This Act shall come into force on a day to be appointed 
for the comIllenceIllent thereof by the Goverrlor-General by 
ProclaInation. 
This Act came into force on 1 January 1955; see S.R. 1954/223. 
2. Interpretation-(l) In this Act, unless the context other­
wise requires,-
"Assignment" means assignInent by act of the parties 
concerned: 
"Commissioner" means the Commissioner of Trade 
Marks: 
"Commonwealth country" means a country that is a 
meInber of the British Commonwealth of Nations; 
and includes every territory for whose interrlational 
relations the GovernInent of that country IS 
responsible: 
"Convention country" means a country in respect of 
which there is for the time being in force an Order 
in Council under section 72 of this Act declaring it to 
be a convention country: 
"Court" means the [High Court]: 
"Government Department" means any Department or 
instlUment of the Executive GovernIllent of New 
Zealand: 
''Journal'' means the Patent Office Journal published under 
subsection (1) of section 112 of the Patents Act 1953: 
"Limitations" means any limitations of the exclusive right 
. to the use of a trade mark given by the registration 
of a person as proprietor thereof, including limitations 
of that right as to mode of use, as to use in relation 
to goods to be sold, or otherwise traded in, in any 
place within New Zealand, or as to use in relation to 
goods to be exported to any market outside New 
Zealand: 
"Mark" includes a device, brand, heading, label, ticket, 
name, signature, word, letter, numeral, or any com­
bination thereof: 566 
4 Trade M arks IP/N/I/NZL/T/l 
Page 5 
R.S. Vo!. 11 
"Permitted use" has the meaning assigned to it by sub­
section (1) of section 37 of this Act: 
"Prescribed", in relation to proceedings before the Court, 
means prescribed by rules of Court, and in other cases 
means prescribed by this Act or by regulations made 
under this Act: 
"Register of trade marks" or "the register" means the 
register of trade marks kept under this Act: 
"Registered trade mark" means a trade mark which IS 
actually on the register: 
"Registered user" means a person who is for the time 
being registered as such under section 37 of this Act: 
"Trade mark" means, except in relation to a certification 
trade mark, a mark used or proposed to be used in 
relation to goods for the purpose of indicating, or so 
as to indicate, a connection in the course of trade 
between the goods and some person having the right 
either as a proprietor or as registered user to use the 
mark, whether with or without any indication of the 
identity of that person, and means, in relation to a 
certification trade mark, a mark registered or deeIDed 
to have been registered upon an application under 
section 4 7 of this Act: 
. "TransIDission" means transIDission by operation of law, 
devolution on the personal representative of a 
deceased person, and any other mode of transfer not 
being assignment. 
(2) References in this Act to the use of a mark shall be con­
strued as references to the use of a printed or other visual 
representation of the mark, and referehces therein to the use 
of a mark in relation to goods shall be construed as references 
to the use thereof upon, or in physical or other relation to, 
goods. 
ef. 1921-22, No. 18, s. 2; 1939, No. 26, s. 2 
In subs. (1): 
"Commonwealth country": See also now s. 4 of the Acts Interpretation Act 1924, and 
the Commonwealth Countries Act 1977. 
"Court": The reference to the High Court was substituted for a reference to the 
Supreme Court by s. 12 of the Judicature Amendment Act 1979. 
S. 6g5 (1) of the Cook. Islands Act 1915 (reprinted 1976. Vol. 4. p. g245) provides that 
the term "New Zealand" in this Act is to be construed as including the Cook. Islands. IP IN I lINZL/T 11 
Page 6 
R.S. Val. 11 Trade Marks Act 1953 567 
5 
S. COll1lI1issioner of Trade Marks-(I) There may from 
time to time be appointed under [the State Services Act 1962] 
some fit person to be the Commissioner of Trade Marks. 
(2) The person who at the commencement of this Act holds 
the office of Commissioner of Patents, Designs, and Trade 
Marks under the Patents, Designs, and Trade Marks Act 
1921-22 shall be deemed to have been appointed as Com­
missioner of Trade Marks under this Act. 
Cf. 1921-22, No. 18, s. 113 
In subs. (1) the State Services Act 1962, being the corresponding enacunent in force 
at the date of this reprint, has been substituted for the repealed Public Service Act 1912. 
4. Assistant COInrnissioners of Trade Marks and other 
officers-(l) There may from time to time be appointed under 
[the State Services Act 1962]-
(a) One or more fit persons to be Assistant Commissioners 
of Trade Marks: 
(b) Such other officers and employees as may be necessary 
for carrying out the provisions of this Act. 
(2) Every Assistant Commissioner of Trade Marks so 
appointed, while he remains in office, shall have and may 
exercise, subject to the control and direction of the Commis­
sioner, all the powers, duties, and functions of the Commis­
sioner, and all references in this or any other Act to the 
Commissioner shall, so far as may be necessary for the pur­
pose of giving effect to the provisions of this section, be 
deemed to include a reference to every Assistant Commis­
sioner of Trade Marks. 
(3) The person who at the commencement of this Act holds 
the office of Deputy Commissioner of Patents, Designs, and 
Trade Marks under the Patents, Designs, and Trade Marks Act 
1921-22 shall be deemed to have been appointed an Assistant 
Commissioner of Trade Marks under this Act. 
C£: 1921-22, No. 18, ss. 114, 115 
In subs. (1) the State Services Act 1962, being the corresponding enacunent in force 
at the date of this reprint, has been substituted for the repealed Public Service Act 1912. 
REGISTRATION, INFRINGEMENT, AND OTHER SUBSTANTIVE 
PROVISIONS 
The Register 
5. The register of trade ntarks-(l) There shall continue 
to be kept at the Patent Office for the purposes of this Act the 
record called the register of trade marks, wherein shall be 
entered all registered trade marks with the names, addresses, 
and descriptions of their proprietors, notifications of assign-568 
6 Trade Marks IP IN 11 INZL/T 11 
Page 7 
R.S. Vol. 11 
ments and transmissions, the names, addresses, and descrip­
tions of all registered users, disclaimt;rs, conditions, limitations, 
and such other matters relating to registered trade marks as 
may be prescribed. 
(2) The register shall continue to be divided into 2 Parts, 
called respectively Part A and Part B. 
(3) Subject to the provisions of this Act and to regulations 
made thereunder, on payment of the prescribed fee, the reg­
ister shall, at all convenient times, be open to inspection by 
the public; and certified copies, sealed with the seal of the 
Patent Office, of any entry in the register shall be given to any 
person requiring them. 
(4) The register shall be prima facie evidence of any matters 
required or authorised by or under this Act to be entered 
therein. 
C£ 1921-22, No. 18, s. 119; 1939, No. 26, s. 3 
Effict cif Registration~ and the Action for Infringement 
6. No action for infringetnent of unregistered trade 
tnark-No person shall be entided to institute any proceeding 
to prevent, or to recover damages for, t4e infringement of an 
unregistered trade mark, but nothing -in this Act shall be 
deemed to affect rights of action against any person for pass­
ing off goods as the goods of another person or the remedies 
in respect thereof. 
C£ 1939, No. 26, s. 4 
7. Registration to be in respect of particular goods-A 
trade mark must be registered in respect of particUlar goods 
or classes of goods, and any question arising as to the class 
within which any goods fall shall be determined by the Com­
missioner, whose decision shall be final. 
C£ 1939, No. 26, s. 5 
8. Right given by registration in Part A, and infringe­
lDent thereof-{I) Subject to the provisions of this section, 
and of sections 11 and 12 of this Act, the registration (whether 
before or after the commencement of this Act) of a person in 
Part A of the register as proprietor of a trade mark (other than 
a certification trade mark) in respect of any goods shall, if 
valid, give or be deemed to have given to that person the 
exclusive right to the use of the trade mark in relation to those 
goods and, without prejudice to the generality of the foregoing 
words, that right shall be deemed to be infringed by any per-IP/N/I/NZL/T/l 
Page 8 
R.S. Vol. 11 Trade Marks Act 1953 569 
7 
son who, not being the proprietor of the trade mark or a 
registered user thereof using by way of the permitted use, uses 
a mark identical with it or so nearly resembling it as to be 
likely to deceive or cause confusion in _the course of trade, in 
relation to any goods in respect of which it is registered, and 
in such manner as to render the use of the mark likely to be 
taken either-
(a) As being used as a trade mark; or 
(b) In a case in which the use is use upon the goods or in 
physical relation thereto or in an advertising circular 
or other advertisell1ent issued to the public, as 
importing a reference to SOll1e person having the 
right either as proprietor or as registered user to use 
the trade mark or to goods with which such a person 
as aforesaid is connected in the course of trade. 
(2) The right to the use of a trade ll1ark given by registration 
as aforesaid shall be subject to any conditions 'or limitations 
entered on the register, and shall not be deemed to be in­
fringed by the use of any such mark as aforesaid in any mode, 
in relation to goods to be sold or otherwise traded in in any 
place, in relation to goods to be exported to any market, or 
in any other circurnstances, to which, having regard to any 
such lill1itations, the registration does not extend. 
(3) The right to the use of a trade mark given by registration 
as aforesaid shall not be deemed to be infringed by the use 
of any such mark as aforesaid by any person-
(a) In relation to goods connected in the course of trade with 
the proprietor or a registered user of the trade mark 
if, as to those goods or a bulk of which they form 
part, the proprietor or the registered' user conform­
ing to the permitted use has applied the trade mark 
and has not subsequently removed or obliterated it, 
or has at any tirne expressly or impliedly consented 
to the use of the trade mark; or 
(b) In relation to goods adapted to form part of, or to be 
accessory to, other goods in relation to which the 
trade mark has been used without infringement of 
the right given as aforesaid or might for the tirne 
being be so used, if the use of the mark is reasonably 
necessary in order to indicate that the goods are so 
adapted and neither the purpose nor the effect of 
the use of the rnark is to indicate otherwise than in 
accordance with the fact a connection in the course 
of trade between any person and the goods. 570 
8 Trade Marks IP/N /l INZLIT /l 
Page 9 
R.S. Vol. 11 
(4) The use of a registered trade tnark, being one of 2 or 
tnore registered trade tnarks that are identical or nearly resern­
ble each other, in exercise of the right to the use of that trade 
rnark given by registration as aforesaid, shall not be deerned 
to be an infringetnent of the right so given to the use of any 
other of those trade tnarks. 
Cf. 1939, No. 26, s. 6 
9. Right given by registration in Part B, and infringe­
tnent thereof-{I) Except as provided by subsection (2) of this 
section, the registration (whether before or after the corn­
rnencetnent of this Act) of a person in Part B of the register 
as proprietor of a trade rnark in respect of any goods shall, if 
valid, give or be deerned to have given to that person the like 
right in relation to those goods as if the registration had been 
in Part A of the register, and the provisions of section 8 of 
this Act shall have effect in like tnanner in relation to a trade 
mark registered in Part B of the register as they have effect 
in relation to a trade mark registered in Part A of the register. 
(2) In any action for infringement of the right to the use of 
a trade tnark given by registration as aforesaid in Part B of 
the register, otherwise than by an act that is deemed to be an 
infringement by virtue of section 10 of this Act, no injunction 
or other relief shall be granted to the plaintiff if the defendant 
establishes to the satisfaction of the Court that the use of which 
the plaintiff cornplains is not likely to deceive or cause con­
fusion or to be taken as indicating a connection in the course 
of trade between the goods and some person having the right 
either as proprietor or as registered user to use the trade mark. 
C£ 1939, No. 26, s. 7 
10. I nfringe tnent by breach of certain restrictions­
(I) Where, by a contract in writing made with the proprietor 
or a registered user of a registered trade mark, a purchaser 
or owner of goods enters into an obligation to the effect that 
he will not do, in relation to the goods, an act to which this 
section applies, any person who, being the owner for the time 
being of the goods and having notice of the obligation, does 
that act, or authorises it to be done, in relation to the goods, 
in the course of trade or with a view to any dealing therewith 
in. the course of trade, shall be deemed thereby to infringe the 
right to the use of the trade rnark given by the registration 
thereof, unless that person becarne the owner of the goods by 
purchase for rnoney or rnoney's worth in good faith before IP IN/lINZL/T 11 
Page 10 
Vol. 11 Trade Marks Act 1953 571 
9 
receiving notice of the obligation or by virtue of a title derived 
through another who so became the owner thereof. 
(2) The acts to which this section applies are-
(a) The application of the trade mark upon the goods after 
they have suffered alteration in any manner specified 
in the contract as respects their state or condition, 
get-up, or packing: 
(b) In a case in which the trade mark is upon the goods, the 
alteration, part removal, or part obliteration thereof: 
(c) In a case in which the trade mark is upon the goods, and 
there is also thereon other matter, being matter indi­
cating a connection in the course of trade between 
.the proprietor or registered user and the goods, the 
removal or obliteration, whether wholly or partly, of 
the trade mark unless that other matter is wholly 
removed or obliterated: 
(d) In a case in which the trade mark is upon the goods, the 
application of any other trade mark to the goods: 
(e) In a case in which the trade mark is upon the goods, the 
addition to the goods of any other matter in writing 
that is likely to injure the reputation of the trade 
mark. 
(3) In this section references in relation to any goods to the 
proprietor, to a registered user, and to the registration of a 
trade mark shall be construed respectively as references to the 
proprietor in whose name the trade mark is registered, to a 
registered user who is registered, and to the registration of the 
trade mark, in respect of those goods; and the expression 
"upon" includes in relation to any goods a reference to phys­
ical relation thereto. 
C£ 1939, No. 26, s. 8 
11. Saving for vested rightS-Nothing in this Act shall enti­
tle the proprietor or a registered user of a registered. trade 
mark to interfere with or restrain the use by any person of a 
trade mark identical with or nearly resembling it in relation 
to goods in relation to which that person or a predecessor in 
title of his had continuously used that trade mark from a date 
anterior-
(a) To the use of the first-mentioned trade mark in relation 
to those goods by the proprietor or a predecessor in 
title of his; or 572 
10 Trade Marks IP IN 11 INZL/T 11 
Page 11 
R.S. Val. 11 
(b) To the registration of the first-mentibned trade mark in 
respect of those goods in the name of the proprietor 
or a predecessor in title of his,-
whichever is the earlier, or to object (on such use being proved) 
to that person being put on the register for that identical or 
nearly resembling trade mark in respect of those goods under 
subsection (2) of section 1 7 of this Act. 
e£ 1939, No. 26, s. 9 
12. Saving for use of natne, address, or description of 
goods-No registration of a trade mark shall interfere with-
(a) Any bona fide use by a person of his own name or of the 
name of his place of business, or of the name, or of 
the name of the place of business, of any of his pre­
decessors in business; or 
(b) The use of any person of any bona fide description of the 
character or quality of his goods, not being a descrip­
tion that would be likely to be taken~s importing 
any such reference as is mentioned in paragraph (a) 
of subsection (1) of section 8 or in paragraph (b) of 
subsection (3) of section 47 of this Act. 
e£ 1939, No. 26, s. 10 
18. Infringetnent by use of natne of cotnpany-In an 
action for infringement of a trad~ mark it shall not of itself 
be a defence that the infringement arose from the use of the 
name under which a comp~y has been registered. 
Registrability and Validity if Registration 
14. Distinctiveness requisite for registration in Part A­
(1) In order for a trade mark (other than a certification trade 
mark) to be registrable in Part A of the register, it must contain 
or consist of at least one of the following essential particulars: 
(a) The name of a company, individual, or finn represented 
in a special or particular manner: 
(b) The signature of the applicant for registration or some 
predecessor in his business: 
(c) An invented word or invented words: 
(d) A word or words having no direct reference to t~e char­
acter or quality of the goods, and not being accord­
ing to its ordinary signification a geographical name 
or a surname: 
(e) Any other distinctive mark, but a name, signature, or 
word or words:t other than such as fall within the IP/NII/NZL/TI1 
Page 12 
R.S. Val. 11 Trade Marks Act 1953 573 
11 
descriptions in the foregoing paragraphs (a), (b), (c), 
and (d), shall not be registrable under the provisions 
of this paragraph except upon evidence of its 
distinctiveness. 
(2) For the purposes of this section "distinctive" rneans 
adapted, in relation to the goods in respect of which a trade 
mark is registered or proposed to be registered, to distinguish 
goods with which the proprietor of the trade rnark is or may 
be connected in the course of trade from goods in the case of 
which no such connection subsists, either generally or, where 
the trade mark is registered or proposed to be registered sub-
ject to limitations, in relation to use within the extent of the 
registration. 
(3) In determining whether a trade Illark is adapted to dis­
tinguish as aforesaid, the Cornmissioner or the Court may have 
regard to the extent to which-
(a) The trade rnark is inherently adapted to distinguish as 
afqresaid; and 
(b) By reason of the use of the trade rnark or of any other 
circurnstances, the trade rnark is in fact adapted to 
distinguish as aforesaid. 
Cf. 1939, No. 26, s. 11 
15. Capability of distinguishing requisite for registration 
in Part B-(I) In order for a trade Illark to be registrable in 
Part B of the register it IllUSt be capable, in relation to the 
goods in respect of which it is registered or proposed to be 
registered, of distinguishing goods with which the proprietor 
of the trade rnark is or Illay be connected in the course of 
trade from goods in the case of which no such connection 
subsists, either generally or, where the trade mark is registered 
or proposed to be registered subject to limitations, in relation 
to use within the extent of the registration. 
(2) In detennining whether a trade Illark is capable of dis­
tinguishing as aforesaid the Commissioner or the Court may 
have regard to the extent to which-
(a) The trad,e rnark is inherently capable of distinguishing as 
aforesaid; and 
(b) By reason of the use of the trade mark or of any other 
circumstances, the trade mark is in fact capable of 
distinguishing as aforesaid. 
(3) A trade mark may be registered in Part B, notwithstand­
ing any registration in Part A in the name of the same pro­
prietor of the same trade mark or any part or parts thereof. 
ef. 1939, No. 26, s. 12 IP/N/1/NZL/T/1 
Page 13 
574 Trade Marks R.S. Val. 11 
12 
16. Prohibition of registration of deceptive, etc., 
tnatter-It shall not be lawful to register as a trade mark or 
part of a trade mark any scandalous matter or any matter the 
use of which would be likely to deceive or cause confusion or 
would be contrary to law or morality or would otherwise be 
disentitled to protection in a Court of justice. 
Cf. 1939, No. 26, s. 13 
17. Prohibition of registration of identical and reselD­
bling trade II1arks-(I) Subject to the provisions of subsection 
(2) of this section, no trade mark shall be registered in respect 
of any goods or description of goods that is identical with a 
trade mark belonging to a different proprietor and already on 
the register in respect of the same goods or description of 
goods, or that so nearly resembles such a trade mark as to be 
likely to deceive or cause confusion. 
(2) In case of honest concurrent use, or of other special cir­
cumstances which in the opinion of the Court or the Com­
missioner make it proper so to do, the Court or the 
Commissioner may permit the registration of trade marks that 
are identical or nearly resemble each other in respect of the 
same goods or description of goods by more than one pro­
prietor subject to such conditions and limitations, if any, as 
the Court or the Commissioner, as the case, may be, may think 
it right to impose. 
(3) Where separate applications are made by different per­
sons to be registered as proprietors respectively of trade marks 
that are identical or nearly resemble each other, in respect of 
the same goods or description of goods, the Commissioner 
may refuse to register any of them until their rights have been 
detennined by the Court, or have been setded by agreement 
in a manner approved by him or on an appeal by the Court. 
Cf. 1939, No. 26, s. 14 
18. Power of COJIl.JIl.issioner to refuse certain applica­
tions-(I) The Commissioner may refuse to accept any appli­
cation for the registration of a mark upon which any of the 
following appear: 
(a) The words "patent", "patented", "registered", "regis­
tered design", or "copyright", or any abbreviations 
thereof, or any words to the like effect: IP IN I lINZL/T 11 
Page 14 
R.S. Vol. 11 Trade Marks Act 1953 575 
13 
(b) Representations of Her Majesty or any IneInber of the 
Royal FaInily, or any colourable iInitations of any 
such representations. 
(2) Repealed by s. 8 (9) if the Geneva Conventions Act 1958. 
As to subs. (1) (b), see s. 14 (2) (b) of the Flags, Emblems, and Names Protection Act 
1981. 
19. Consents required in certain cases-(l) Where a rep­
resentation of the annorial bearing, insignia, orders of chiv­
alry, decorations, or flags of any State, city, borough, town, 
place, society, body corporate, institution, or person appears 
on a mark the registration of which is applied for, the Com­
missioner Inay at any tiIne before the registration of the Inark 
require the written consent to the registration and use of the 
em.blems of such official or other person as appears to the 
Commissioner to be entitled to give consent. 
(2) Where the naIlle or representation of any person appears 
on a mark the registration of which is applied for, the Com­
missioner Inay at any tiIne before the registration of the Inark 
require the written consent of that person unless it is shown 
to the CoIllIIlissioner that the person is dead: 
Provided that, if the person has died within the previous 10 
years or if for any reason which the COIllIllissioner thinks suf­
ficient the consent of that person cannot be obtained, the 
COIIlll1issioner Illay instead require the consent of the person's 
legal representative. 
(3) In any case to which this section applies, the Commis­
sioner may refuse to register the mark until he has received 
the required consent. 
20. Marks in respect of a class or large variety of 
goods-In the case of an application for registration in respect 
of all the goods included in a class or of a large variety of 
goods, the Commissioner may refuse to accept the application 
unless he is satisfied that the specification is justified by the 
use of the mark which the applicant has made, or intends to 
make if and when it is registered. 
21. Restraint on registration of representation of Royal 
Anns, etc., as part of trade lTlark-(I) It shall not be lawful 
without the authority of Her Majesty or of the Governor­
General to register a trade mark which contains any of the 
following matters or words: IP IN I I/NZL/T 11 
Page 15 
576 Trade Marks R.S. Vol. 11 
14 
[(a) Any representation or word referred to in any of sections 
12 to 15 of the Flags, Emblems, and Names Protec­
tion Act 1981:] 
(b) to (i) Repealed by s. 27 (1) if the Flags;, Emblems;, and Names 
Protection Act 1981. 
~) Any word or mark which is declared by the Governor­
General by Order in Council to be for the purposes 
of this section a prohibited word or mark, or any 
word or mark so nearly resembling any such word 
or mark as to be likely to deceive. 
(2) Nothing in this section shall be construed as affecting the 
right (if any) of the proprietor of a trade mark containing any 
such matter or word to continue to use that mark. 
C£ 1939, No. 26, s. 47 
In subs. (I), para. (a) was substituted for the original paras. (a)-(i) by s. 27 (I) of the Flags, 
Emblems, and Ncunes Protection Act 1981. 
For a mark declared to be a prohibited mark pursuant to subs. (I) G), see S.R. 1957/179. 
22. Registration in Part A to be conclusive as to validity 
after 7 years-( 1) In all legal proceedings relating to a trade 
mark registered in Part A of the register (including applications 
under section 41 of this Act) the original registration in Part 
A of the register of the trade rnark shall, after the expiration 
of 7 years from the date of that registration, be taken to be 
valid in all respects, unless-
(a) That registration was obtained by fraud; or 
(b) The trade mark offends against the provisions of s~ction 
16 of this Act. 
(2) Nothing in subsection (1) of section 9 of this Act shall be 
construed as making applicable to a trade mark, as being a 
trade mark registered in Part B of the register, the foregoing 
provisions of this section relating to a trade rnark registered 
in Part A of the register. 
C£ 1939, No. 26, s. 15 
28. Registration subject to disclaitner-If a trade mark­
(a) Contains any part not separately registered by the pro­
prietor as a trade mark; or 
(b) Contains matter common to the trade or otherwise of a 
non-distinctive character,-
the Corrnnissioner or the Court, in deciding whether the trade 
mark shall be entered or shall remain on the register, may 
require, as a condition of its being on the register,-
(i) That the proprietor shall disclaim any right to the exclu­
sive use of any part of the trade mark, or to the IP/N/1/NZL/T 11 
Page 16 
R.S. Vol. 11 Trade Marks Act 1953 577 
15 
exclusive use of all or any portion of any such matter 
as aforesaid, to the exclusive use of which the Com­
missioner or the Court holds him not to be entitled; 
or 
(ii) That the proprietor shall make' such other disclaimer as 
the Commissioner or the Court may consider ne~­
essary for the purpose of defining his rights under 
the registration: 
Provided that no disclaimer on the register shall affect any 
rights of the proprietor of a trade mark except such as arise 
out of the registration of the trade mark in respe'Ct of which 
the disclaimer is made. 
Cf. 1939, No. 26, s. 16 
24. Words used as name or description of an article or 
substance-(l) The registration of a trade mark shall not be 
deemed to have become invalid by reason only of any use, 
after the date of the registration, of a .ord or words which 
the trade mark contains, or of which it consists, as the name 
or description of an article or substance: 
Provided that, if it is proved either-
(a) That there is a well known and established use of the 
word or words as the name or description of the 
article or substance by a person or persons carrying 
on a trade therein, not being use in relation to goods 
connected in the course of trade with the proprietor 
or a registered user of the trade mark or (in the case 
of a certification trade mark) goods certified by the 
proprietor; or 
(b) That the article or substance was formerly manufactured 
under a patent (being a patent in force on, or granted 
after, the 1st day of July 1922), that a period of 2 
years or more after the cesser of the patent has 
elapsed, and that the word or words is or are the 
onfy practicable name or description of the article or 
substance,-
the provisions of subsection (2) of this section shall have effect. 
(2) Where the facts mentioned in paragraph (a) or paragraph 
(b) of the proviso to subsection (I) of this section are proved 
with respect to any word or words, then- . 
(a) If the trade mark consists solely of that word or those 
words, the registration of the trade mark, so far as 
regards registration in respect of the article or sub­
stance in question or of any goods of the same 578 
16 Trade Marks IP IN 11 INZL/T 11 
Page 17 
R.S. Vol. 11 
description, shall be deemed for the purposes of sec­
tion 4 1 . of this Act to be an entry wrongly remaining 
on the register; 
(b) If the trade mark contains that word or those words and 
other matter, the Court or the Commissioner, in 
deciding whether the trade mark shall remain on the 
register, so far as regards registration in respect of 
the article or substance in question and of any goods 
of the same description, may, in case of a decision 
in favour of its remaining on the register, require as 
a condition thereof that the proprietor shall disclaim 
any right to the exclusive use in relation to that 
article or substance and any goods of the same 
description of that word or those words, so, how­
ever, that no disclaimer on the register shall affect 
any rights of the proprietor of a trade mark except 
such a~ arise out of the registration of the trade mark 
in respect of which the disclaimer is made; and 
(c) For the purposes of any other legal proceedings relating 
to the trade mark,-
(i) If the trade mark consists solely of that word or 
those words, all rights of the proprietor, whether 
under the common law or by registration, to the 
exclusive use of the trade mark in relation to the 
article or substance in question or to any goods of 
the same description; or 
(ii) If the trade mark contains that word or those 
words and other matter, all such rights of the pro­
prietor to the exclusive use of that word or those 
words in such relation as aforesaid,-
shall be deemed to have ceased on the date at which 
the use mentioned in paragraph (a) of the proviso to 
subsection (1) of this section first became well known 
and established, or at the expiration of the period 
of 2. years mentioned in paragraph (b) of that 
provIso. 
(3) No word which is the c~mmonly used and accepted name 
of any single chemical element or single chemical compound, 
as distinguished from a mixture, shall be registered as a trade 
mark in respect of a chemical substance or preparation, and 
any such registration in force at the commencement of this 
Act or thereafter shall, notwithstanding anything in section 22 
of this Act, be deemed for the purposes of section 4 1 of this 
Act to be an entry made in the register without sufficient IP IN 11 INZL/T 11 
Page 18 
R.S. Val. 11 Trade Marks Act 1953 579 
17 
cause, or an entry wrongly remaining on the register, as the 
circumstances may require: 
Provided that the foregoing provisions of this subsection 
shall not have effect in relation to a word which is used to 
denote only a brand or make of the element or compound as 
made by the proprietor or a registered user of the trade mark, 
as distinguished from the element or compound as made by 
others, and in association with a suitable name or description 
open to· the public use. 
Cf. 1939, No. 26, s. 1 7 
25. Effect of litnitation as to colour, and of absence 
thereof-A trade mark may be limited in whole or in part to 
one or more specified colours, and in any such case the fact 
that it is so limited shall be taken into consideration by the 
Commissioner or the Court in deciding on the distinctive char­
acter of the trade mark. If and so far as a trade mark is reg­
istered without limitation of colour, it shall be deemed to be 
registered for all colours. 
Cf. 1939, No. 26, s. 18 
Procedure .for~ and Duration f!t Registration 
26. Application for registration-(l) Any person claiming 
to be the proprietor of a trade mark used or proposed to be 
used by him who is desirous of registering it shall apply in 
writing to the Commissioner in the prescribed manner for reg­
istration either in Part A or in Part B of the register. 
(2) Subject to the provisions of t~is Part of this Act, the Com­
missioner may refuse the application, or may accept it abso­
lutely or subject to such amendments, modifications, 
conditions, or limitations, if any, as he may think right. 
(3) In the case of an application for registration of a trade 
mark (other than a certification trade mark) in Part A of the 
register, the Commissioner may, if the applicant is willing, 
instead of refusing the application, treat it as an application 
for registration in Part B, and deal with the application 
accordingly. 
(4) In the case of a refusal or conditional acceptance, the 
Commissioner shall, if required by the applicant, state in writ­
ing the grounds of his decision and the materials used by him 
in arriving there at, and the decision shall be subject to appeal 
to the Court. 
(5) An appeal under this section shall be made in the pre­
scribed manner, and on the appeal the Court shall, if required, 
Inset IP/N/1/NZL/T/1 
Page 19 
580 Trade Marks R.S. Vol. 11 
18 
hear the applicant and the Commissioner, and shall make an 
order determining whether, and subject to what amendments, 
modifications, conditions or limitations, if any, the application 
is to be accepted. 
(6) Appeals under this section shall be heard on the materials 
stated as aforesaid by the Commissioner, and no further 
grounds of objection to the acceptance of the application shall 
be allowed to be taken by the Commissioner, other than those 
so stated as aforesaid by him, except by leave of the Court. 
Where any further grounds of objection are taken, the appli­
cant shall be entitled to withdraw his application without pay­
ment of costs on giving notice as prescribed. 
(7) The Commissioner or the Court as the case may be, may 
at any time, whether before or after acceptance, correct any 
error in or in connection with the application, or may permit 
the applicant to amend his application upon such terms as the 
Commissioner or the Court, as the case may be, may think 
fit. 
C£ 1939, No. 26, s. 19 
27. Advertisetnent and opposition to registration­
(1) When an application for registration of a trade mark has 
been accepted, whether absolutely or subject to conditions or 
limitations, the Commissioner shall, as soon as may be after 
acceptance, cause the application as accepted to be advertised 
in the prescribed manner, and the advertisement shall set forth 
all conditions and limitations subject to which the application 
has been accepted: 
Provided that the Commissioner may cause an application 
to be advertised before acceptance if it is made under para­
graph (e) of subsection (1) of section 14 of this Act, or in any 
other case where it appears to him that it is expedient by 
reason of any exceptional circumstances so to do, and where 
an application has been so advertised the Commissioner may, 
if he thinks fit, advertise it again when it has been accepted 
but shall not be bound so to do. 
(2) Any person may, within the prescribed time from the 
date of the advertisement of an application, give notice to the 
Commissioner of opp_osition to the registration. 
[(2A) In the case of an application for registration in respect 
of which an extension of time has been granted under section 
74A of this Act, notice of opposition to registration may also 
be given on the ground that an extension of time granted by 
the Commissioner under that section was unwarranted.] IP/NI 1 INZL/T/l 
Page 20 
R.S. Vol. 11 Trade Marks Act 1953 581 
19 
(3) The notice shall be given in writing in the prescribed 
rnanner, and shall include a staternent of the grounds of 
opposition. 
(4) The. Commissioner shall send a copy of the notice to the 
applicant, and within the prescribed tirne after receipt thereof 
the applicant shall send to the Commissioner, in the prescribed 
rnanner, a counter-staternent of the grounds on which he relies 
for his application, and if he does not do so, he shall be 
deemed to have abandoned his application. 
(5) If the applicant sends such a counter-statement as afore­
said, the Commissioner shall furnish a copy thereof to the 
persons giving notice of opposition, and shall, after hearing 
the parties, if so required, and considering the evidence, decide 
whether, and subject to· what conditions or limitations, if any, 
registration is to be permitted. 
(6) The decision of the Cornmissioner shall be subject to 
appeal to the Court. 
(7) An appeal under this section shall be made in the pre­
scribed rnanner, and on the appeal the Court shall, if required, 
hear the parties and the Commissioner, and shall make an 
order determining whether, and subject to what conditions or 
lirnitations, if any, registration is to be permitted. 
(8) On the hearing of an appeal under this section any party 
rnay, either in the rnanner prescribed or by special leave of 
the Court, bring forward further material for the consideration 
of the Court. 
(9) On an appeal under this section no further grounds of 
objection to the registration of a trade mark shall be allowed 
to be taken by the opponent or the Commissioner, other than 
those so stated as aforesaid by the opponent, except by leave 
of the Court. Where any further grounds of objection are 
taken, the applicant shall be entitled to withdraw his appli­
cation without payment of the costs of the opponent on giving 
notice as prescribed. . 
(10) On an appeal under this section the Court may, after 
hearing the Cornrnissioner, permit the trade mark proposed 
to be registered to be modified in any manner not substan­
tially affecting the identity thereof, but in any such case the 
trade rnark as so modified shall be advertised in the prescribed 
rnanner before being registered. 
(11) If a person giving notice of opposition or an applicant 
sending a counter-statement after receipt of a copy of such 
notice, or an appellant, neither resides nor carries on business 
in New Zealand, the Commissioner or the Court, as the case 
may be, rnay require him to give security for costs of the pro-582 
20 Trade M arks IP/N/1/NZL/T/1 
Page 21 
R.S. Val. 11 
ceedings before the COIllIllissioner or the Court relative to the 
opposition or to the appeal, as the case may be, and in default 
of such security being duly given may treat the opposition or 
application, or the appeal, as the case may be, as abandoned. 
C£ 1939, No. 26, s. 20 
Subs. (2A) was inserted by s. 3 of the Trade Marks Amendment Act 1972. 
28. Registrati?n-(I) Whe? an application f~r registration 
of a trade mark ID Part A or ID Part B of the regtster has been 
accepted, and either-
(a) The application has not been opposed and the time for 
notice of opposition has expired; or 
(b) The application has been opposed and the opposition has 
been decided in favour of the applicant,-
the Commissioner shall, unless the application has been 
accepted in error or unless the Court otherwise directs, register 
the trade mark in Part A or Part B, as the case may be, and 
the trade mark when registered shall be registered as of the 
date of the application for registration, and that date shall be 
deemed for the purposes of this Act to be the date of 
registration: 
Provided that the foregoing provisions of this subsection 
relating to the date as of which a trade mark shall be registered 
and to the date to be deemed to be the date of registration, 
shall, as respects a trade mark registered under this Act with 
the benefit of section 73 of this Act or any other enactment 
relating to international. arrangements, have effect subject to 
the provisions of that enactment. 
(2) On the registration of a trade mark the Commissioner 
shall issue to the applicant a certificate in the prescribed form 
of the registration thereof sealed with the seal of the Patent 
Office. 
(3) Where registration of a trade mark is not completed 
within 12 months from the date of the application by reason 
of default on the part of the applicant, the Commissioner lllay, 
after giving notice of the non-completion to the applicant in 
writing in the prescribed rnanner, treat the application as 
abandoned unless it is cOlllpleted within the time specified in 
that behalf in the notice. 
C£ 1939, No. 26, s. 21 IP 1Nl 1 INZL/T 11 
Page 22 
R.S. Vol. 11 Trade Marks Act 1953 583 
21 
29. Duration and renewal of registration-Cl) The regis­
tration of a trade Illark shall be for a period of 7 years, but 
Illay be renewed from tiIlle to time in accordance with the 
provisions of this section: 
Provided that, in relation to a registration as of a date before 
the 1st day of January 1940, this subsection shall have effect 
with the substitution of a period of 14 years for the said period 
of 7 years. 
(2) The Commissioner shall, on application made by the reg­
istered proprietor of a trade mark ll'l the prescribed manner 
and within the prescribed period, renew the registration of the 
trade mark for a period of 14 years fr9Ill the date of expiration 
of the original registration or of the last renewal of registra­
tion, as the case may be, which date is in this section referred 
to as the expiration of the last registration. 
(3) At the prescribed time before the expiration of the last 
registration of a trade mark, the Commissioner shall send 
notice in the prescribed manner to the registered proprietor 
of the date of expiration and the conditions as to payment of 
fees and otherwise upon which a renewal of registration may 
be obtained, and, if at the expiration of the time prescribed 
in that behalf those conditions have not been duly complied 
with, the Commissioner may remove the trade mark from the 
register, subject to such conditions, if any, as to its restoration 
to the register as may be prescribed. 
(4) Where a trade mark has been removed from the register 
for non-payment of the fee for renewal, it shall, nevertheless, 
for the purpose of any application for the registration of a 
trade mark during one year next after the date of the removal, 
be deemed to be a trade mark that is already on the register: 
Provided that the foregoing provisions of this subsection 
shall not have effect where the Commissioner is satisfied 
either-
(a) That there has been no bona fide trade use of the trade 
mark that has been removed during the 2 years 
immediately preceding its removal; or 
Cb) That no deception or confusion would be likely to arise 
from the use of the trade mark that is the subject of 
the application for registration by reason of any pre­
vious use of the trade mark that has been removed. 
ef. 1939, No. 26, s. 22 IP IN I I/NZL/T 11 
Page 23 
584 Trade Marks R.S. Vol. 11 
22 
80. Registration of parts of trade tnarks and of trade 
tnarks as a series-( 1) Where the proprietor of a trade mark 
claims to be entitled to the exclusive use of any part thereof 
separately, he may apply to register the whole and any such 
part as seearate trade marks. Each such separate trade mark 
must satisty all the conditions of an independent trade mark, 
and shall, subject to the provisions of subsection (3) of section 
32 and subsection (2) of section 39 of this Act, have all the 
incidents of an independent trade mark. 
(2) Where a person claiming to be the proprietor of several 
trade marks, in respect of the same goods or description of 
goods, which, while resembling each other in the material par­
ticulars thereof, yet differ in respect of-
(a) Statements of the goods in relation to which they are 
respectively used or proposed to be used; or 
(b) Statements of number, price, quality, or names of places; 
or 
(c) Other matter of a non-distinctive character which does 
not substantially affect the identity of the trade mark; 
or 
(d) Colour,-
seeks to register those trade marks, they' may be registered as 
a series in one registration. 
C£ 1939, No. 26, s. 23 
A.s.signment and Tran.smis.sion 
81. Powers of, and restrictions on, assigntnent and 
transtnission-(I) Notwithstanding any rule of law or equity 
to the contrary, a registered trade mark shall be, and sh~l be 
deemed always to have been, assignable and transmissible 
either in connection with the goodwill of a business or not. 
(2) A registered trade mark shall be, and shall be deemed 
always to have been, assignable and transrnissible in respect 
either of all the goods in respect of which it is registered, or 
was registered, as the case may be, or of some (but not all) of 
those goods. 
(3) The provisions of subsections (1) and (2) of this section 
shall have effect in the case of an unregistered trade mark used 
in relation to any goods as they have effect in the case of a 
registered trade mark registered in respect of any goods, if at 
the time of the assignment or transmission of the unregistered 
trade mark it is or was used in the same business as a regis­
tered trade mark, and if it is or was assigned or transmitted 
at the same tiIlle and to the same person as that registered IP/NI 1 INZL/TI 1 
Page 24 
R.S. Vol. 11 Trade Marks Act 1953 585 
23 
trade mark and in respect of goods all of which are goods in 
relation to which the unregistered trade mark is or was used 
in that business and in respect of which that registered trade 
mark is or was assigned or transmitted. 
(4) Notwithstanding anything in the foregoing provisions of 
this section, a trade mark shall not be, or be deemed to have 
been, assignable or transmissible in a case in which as a result 
of an assignment or transmission there would in the circum­
stances subsist or have subsisted, whether under the common 
law or by registration, exclusive rights in more than one of 
the persons concerned to the use, in relation to the same goods 
or description of goods, of trade marks nearly resembling each 
other or of identical trade marks, if, having regard to the sim­
ilarity of the goods and of the trade ~ark, the use of the trade 
marks in exercise of those rights would be, or have been, likely 
to deceive or cause confusion: 
Provided that, where a trade mark is, or has been, assigned 
or transmitted in such a case as aforesaid, the assignment or 
transmission shall not be deemed to be, or to have been, 
invalid under this subsection if the exclusive rights subsisting 
as a result thereof in the persons concerned respectively are, 
or were, having regard to limitations imposed thereon, such 
as not to be exercisable by2 or more of those persons in 
relation to goods to be sold, or otherwise traded in, within 
New Zealand (otherwise than for export there from) or in rela­
tion to goods to be exported to the same market outside New 
Zealand. 
(5) The proprietor of a registered trade mark who proposes 
to assign it in respect of any goods in respect ~f which it is 
registered may submit to the Commissioner in the prescribed 
manner a statement of case setting out the circumstances, and 
the Commissioner may issue to him a certificate stating 
whether, having regard to the similarity of the goods and of 
the trade marks referred to in the case, the proposed assign­
ment of the first-mentioned trade mark would or would not 
be invalid under subsection (4) of this section, and a certificate 
so issued shall, subject to the provisions of this section as to 
appeal and unless it is shown that the certificate was obtained 
by fraud or misrepresentation, be conclusive as to the validity 
or invalidity under subsection (4) of this section, of the assign­
ment in so far as that validity or invalidity depends upon the 
facts set out in the case, but, as regards a certificate in favour 
of validity, only if application for the registration under section 
34 of this Act of the title of the person becoming entitled is IP/N/I/NZL/T/l 
Page 25 
586 Trade Marks R.S. Vol. 11 
24 
made within 6 months from the date on which the certificate 
is issued. 
(6) Notwithstanding anything in subsections (1) to (3) of this 
section, a trade mark shall not, after the 1st day of January 
1 940, be or have been assignable or transmissible in a case in 
which as a result of an assignment or transmission thereof 
there would in the circumstances subsist or have subsisted, 
whether under the common law or by registration, an exclu­
sive right in one of the persons concerned to the use of the 
trade mark limited to use in relation to goods to be sold, or 
otherwise traded in, in a place or places in New Zealand, and 
an exclusive right in another of those persons to the use of a 
trade mark nearly resembling the first-mentioned trade mark 
or of an identical trade mark in relation to the same goods 
or description of goods limited to use in relation to goods to 
be sold, or otherwise traded in, in another place or other 
places in New Zealand: 
Provided that, on application in the prescribed manner by 
the proprietor of a trade mark who proposes to assign it, or 
of a person who claims that a trade mark has been transmitted 
to him or to a predecessor in title of his after the 1 st day of 
January 1940, in any such case, the Commissioner, if he is 
satisfied that in all the circumstances the use of the trade marks 
in exercise of the said rights would not be contrary to the 
public interest, may approve the assignment or transmission, 
and an assignment or transmission so approved shall not be 
deemed to be, or to have been, invalid under this subsection 
or under subsection (4) of this section, so, however, that in the 
case of a registered trade mark this provision shall not have 
effect unless application for the registration under section 34 
of this Act of the title of the person becoming entitled is made 
within 6 months from the date on which the approval is given 
or, in the cas.e of a transmission, was made before that date. 
(7) Where an assignment in respect of any goods of a trade 
mark that is at the time of the assignment used in a business 
in those goods is or has been made, after the 1st day of Jan­
uary 1 940, otherwise than in connection with the goodwill of 
that business, the assignment shall not take effect until the 
following requirements have been satisfied-that is to say, the 
assignee shall, not later than the expiration of 6 months from 
the date on which the assignment is or has been made or 
within such extended period, if any, as the Commissioner may 
allow, apply to him for directions with respect to the adver­
tisement of the assignment, and shall advertise it in such fonn IP/N/1/NZL/T/l 
Page 26 
R.S. Vol. 11 Trade Marks Act 1953 587 
25 
and rnanner and within such period as the Cornrnissioner rnay 
direct. 
(8) Any decision of the COIllIllissioner under this section shall 
be subject to appeal to the Court. 
Cf. 1939, No. 26, s. 24 
32. Certain trade tnarks to be associated so as to be 
assignable and transtnissible as a whole only-(I) Trade 
rnarks that are registered as, or that are deerned by virtue of 
this Act to be, associated trade marks shall be assignable and 
transrnissible only as a whole and not separately, but they shall 
for all other purposes be deerned to have been registered as 
separate trade rnarks. 
(2) Where a trade mark that is registered, or is the subject 
of an application for registration, in respect of any gooqs is 
identical with another trade mark that is registered, or is the 
subject of an application for registration, in the name of the 
same proprietor in respect of the same goods or description 
of goods, or so nearly resernbles it as to be likely to deceive 
or cause confusion if used by a person other than the pro­
prietor, the Commissioner may at any time require that the 
trade rnarks shall be entered on the register as associated trade 
rnarks. 
(3) Where a trade rnark and any part or parts thereof are 
by virtue of subsection (1) of section 30 of this Act, registered 
as separate trade marks in the narne of the same proprietor, 
they shall be deemed to be, and shall be registered as, asso­
ciated trade rnarks. 
(4) All trade marks that are, by virtue of subsection (2) of 
section 30 of this Act, registered as a series in one registration 
shall be deemed to be, and shall be registered as, associated 
trade rnarks. 
(5) On application made in the prescribed rnanner by the 
registered proprietor of 2 or more trade ITlarks registered as 
associated trade marks, the COITlITlissioner may dissolve the 
association as respects any of theITl if he is satisfied that there 
would be no likelihood of deception or confusion being caused 
if that trade mark were used by another person in relation to 
any of the goods in respect of which it is registered, and may 
amend the register accordingly. 
(6) Any decision of the Commissioner under subsection (2) 
or subsection (5) of this section shall be subject to appeal to 
the Court. 
C£ 1939, No. 26, s. 25 IP/N/I/NZL/T/l 
Page 27 
588 Trade Marks R.S. Vol. 11 
26 
33. Power of registered proprietor to assign and give 
receipts-Subject to the provisions of this Act, the person for 
the time being entered in the register as proprietor of a trade 
mark shall, subject to any rights appearing from the register 
to be vested in any other person, have power to assign the 
trade mark, and to give effectual receipts for any consideration 
for an assignment thereof. 
cr 1939, No. 26, s. 26 
34. Registration of assignJYlents and transJYlissions­
(1) Where a person becomes entitled by assignment or trans­
mission to a registered trade mark, he shall make application 
to the Commissioner to register his title, and the Commis­
sioner shall, on proof of the title of the applicant, register him 
as the proprietor of the trade mark in respect of the goods in 
respect of which the assignnlent or transmission has effect, and 
shall endorse the certificate of registration accordingly if it is 
produced to him and shall cause any assignment, transmission, 
or other document produced in evidence of title or a copy 
thereof to be filed for public record. 
(2) Any decision of the Comnlissioner under this section 
shall be subject to appeal to the Court. -
(3) Except for the purposes of an appeal under this section 
or of an application under section 41 of this Act, a docunlent 
or instrument in respect of which no entry has been nlade in 
the register in accordance with the provisions of subsection (1) 
of this section shall not be admitted in evidence in any Court 
in proof of the title to a trade mark unless the Court otherwise 
directs. 
Cf. 1939, No. 26, s. 47 
Use and Non-use 
35. ReJYloval froJYl register and illlposition of liJYlita­
tions on ground of non-use-(I) Subject to the provisions of 
section 36 of this Act, a registered trade mark may be taken 
off the register in respect of any of the goods in respect of 
which it is registered on application by any person aggrieved 
to the Court or, at the option of the applicant and subject to 
the provisions of section 67 of this Act, to the Commissioner, 
on the ground either-
(a) That the trade mark was registered without any bona fide 
intention on the part of the applicant for registration 
that it should be used in relation to those goods by 
him, and that there has in fact been no bona fide use IP/N/I/NZL/T/l 
Page 28 
R.S. Val. 11 Trade Marks Act 1953 589 
27 
of the trade mark in relation to those goods by any 
proprietor thereof for the time being up to the date 
one month before the date of the application; or 
(b) That up to the date one month before the date of the 
application a continuous period of 5 years or longer 
elapsed during which the trade mark was a registered 
trade mark and during which there was no bona fide 
use thereof in relation to those goods by any pro­
prietor thereof for the time being: 
Provided that (except where the applicant has been permit­
ted under subsection (2) of section 1 7 of this Act to register 
an identical or nearly resembling trade mark in respect of the 
goods in question or where the Court or the Commissioner is 
of opinion that he might properly be pennitted so to register 
such a trade mark) the Court or the Commissioner, as the case 
may be, may refuse an application made under paragraph (a) 
or paragraph (b) of this subsection in relation to any goods, if 
it is shown'that there has been, before the relevant date or 
during the relevant period, as the case may be, bona fide use 
of the trade mark by any proprietor thereof for the time being 
in relation to goods of the same description, being goods in 
respect of which the trade mark is registered. 
(2) Where in relation to any goods in respect of which a 
trade mark is registered-
(a) The matters referred to in paragraph (b) of subsection (1) 
of this section are shown so far as regards non-use 
of the trade mark in relation to goods to be sold, or 
otherwise traded in, in a particular place in New 
Zealand (otherwise than for export from New 
Zealand), or in-relation to goods to be exported to 
a particular market outside New Zealand; and 
(b) A person has been permitted under subsection (2) of sec­
tion 1 7 of this Act to register an identical or nearly 
resembling trade mark in respect of those goods 
under a registration extending to use in relation to 
goods to be sold, or otherwise traded in, in that place 
(otherwise than for export from New Zealand), or in 
relation to goods to be exported to that market, or 
the Court or the Commissioner, as the case may be, 
is of opinion that he might properly be permitted so 
to register such a trade mark,-
on application by that person to the Court or, at the option 
of the applicant and subject to the provisions of section 67 of 
this Act, to the Commissioner, the Court or the Commissioner, 
as the case may be, may impose on the registration of the 590 
28 Trade Marks IP IN 11 INZL/T 11 
Page 29 
R.S. Val. 11 
first-mentioned trade Illark such limitations as the Court or 
the Commissioner thinks proper for securing that that regis­
tration shall cease to extend to such use as last aforesaid. 
(3) An applicant shall not be entitled to rely for the purposes 
of paragraph (b) of subsection (1), or for the purposes of sub­
section (2), of this section on any non-use of a trade mark that 
is shown to have been due-
(a) To special circuIllstances in the trade and not to any 
intention not to use or to abandon the trade mark 
in relation to the goods to which the application 
relates; or 
(b) To circuIllstances attributable to any war in which Her 
Majesty in right of her Government in New Zealand 
may be, or may have been, engaged. 
(4) The reputation which a trade mark possesses shall not 
be affected, or be deemed heretofore to have been affected, 
by any non-user or reduced user thereof which is due to cir­
cumstances attributable to any war in which Her Majesty in 
right of her Government in New Zealand may be, or may have 
been, engaged. 
Cf. 1939, No. 26, s. 28; 1945, No. 24, s. 2 
86. Defensive registration of well-known trade tnarks­
(1) Where a trade mark consisting of an invented word or 
invented words has become so well known as respects any 
goods in respect of which it is registered and in relation to 
which it has been used that the use thereof in relation to other 
goods would be likely to be taken as indicating a connection 
in the course of trade between those goods and a person 
entitled to use the trade Illark in relation to the first-mentioned 
goods, then, notwithstanding that the proprietor registered in 
respect of the first-mentioned goods does not use or propose 
to use the trade Illark in relation to those other goods, and 
notwithstanding anything in section 35 of this Act, the trade 
mark may, on the application in the prescribed manner of the 
proprietor registered in respect of the first-mentioned goods, 
be registered in his name in respect of those other goods as 
a defensive trade Illark, and, while so registered, shall not be 
liable to be taken off the register in respect of those goods 
under that section. 
(2) The registered proprietor of a trade mark may apply for 
the registration thereof in respect of any goods as a defensive 
trade mark notwithstanding that it is already registered in his 
name in respect of those goods otherwise than as a defensive IP IN/1 INZL/T 11 
Page 30 
R.S. Val. 11 Trade Marks Act 1953 591 
29 
trade mark, or may apply for the registration thereof in 
respect of any goods otherwise than as a defensive trade mark 
notwithstanding that it is already registered in his name in 
respect of those goods as a defensive trade mark, instead ID 
each case of the existing registration. 
(3) A trade mark registered as a defensive trade mark and 
that trade mark as otherwise registered in the name of the 
same proprietor shall, notwithstanding that the respective reg­
istrations are in respect of different goods, be deemed to be, 
and shall be registered as, associated trade marks. 
(4) On application by any person aggrieved to the Court or, 
at the option of the applicant and subject to the provisions of 
section 67 of this Act, to the Commissioner, the registration 
of a trade mark as a defensive trade mark may be cancelled 
on the ground that the requirements of subsection (1) of this 
section are no longer satisfied in respect of any goods in 
respect of which the trade mark is registered in the name of 
the same proprietor otherwise than as a defensive trade mark, 
or may be cancelled as respects any goods in respect of which 
it is registered as a defensive trade mark on the ground that 
there is no longer any likelihood that the use of the trade mark 
in relation to those goods would be taken as giving the indi­
cation mentioned in subsection (1) of this section. 
(5) The Commissioner may at any time cancel the registra­
tion as a defensive trade mark of a trade mark of which there 
is no longer any registration in the name of the same pro­
prietor otherwise than as a defensive trade mark. 
(6) Except as otherwise expressly provided in this section, 
the provisions of this Act shall apply in respect of the regis­
tration of trade marks as defensive trade marks and of trade 
marks so registered as they apply in other cases. 
Cf. 1939, No. 26, s. 29 
87. Registered users-Cl) Subject to the prOVISIons of this 
section, a person other than the proprietor of a trade mark 
may be registered as a registered user thereof in respect of all 
or any of the goods in respect of which it is registered (other­
wise than as a defensive trade mark) and either with or without 
conditions or restrictions. The use of a trade mark by a reg­
istered user thereof in relation to goods with which he is con­
nected in the course of trade and in respect of which for the 
time being the trade mark remains registered and he is reg­
istered as a registered user, being use such as to comply with 592 
30 Trade Marks IP IN I lINZL/T 11 
Page 31 
R.S. Val. 11 
any conditions or restrictions to which his registration is sub­
ject, is in this Act referred to as the "permitted use" thereof 
(2) The permitted use of a trade mark shall be deemed to 
be use by the proprietor thereof, and shall be deemed not to 
be use by a person other than the proprietor, for the purposes 
of section 35 of this Act and for any other purpose for which 
such use is material under this Act or at common law. 
(3) Subject to any agreement subsisting between the parties, 
a registered user of a trade mark shall be entitled to call upon 
the proprietor thereof to take proceedings to prevent infringe­
ment thereof, and, if the proprietor refuses or neglects to do 
so within 2 months after being so called upon, the registered 
user may institute proceedings for infringement in his own 
name as if he were the proprietor, making the proprietor a 
defendant. A proprietor so added as defendant shall not be 
liable for any costs unless he defends the proceedings. 
(4) Where it is proposed that a person should be registered 
as a registered user of a trade mark, the proprietor and the 
prop9sed registered user shall apply in writing to the Com­
missioner in the prescribed manner and shall furnish him with 
a statutory declaration made by the proprietor, or by some 
person authorised to act on his behalf and approved by the 
Commissioner, -
(a) Giving particulars of the relationship, existing or pro­
posed, between the proprietor and the proposed reg­
istered user, including particulars showing the degree 
of control over the permitted use which their rela­
tionship will confer and whether it is a term of their 
relationship that the proposed registered user shall 
be the sole registered user or that there shall be any 
other restriction as to persons for whose registration 
as registered users application may be made; and 
(b) Stating the goods in respect of which registration is pro­
posed; and 
(c) Stating any conditions or restrictions proposed with 
respect to the characteristics of the goods, to the 
mode or place of permitted use, or to any other 
matter; and 
(d) Stating whether the permitted use is to be for a period 
or without limit of period, and, if for a period, the 
duration thereof,-
and with such further documents, information, or evidence as 
may be prescribed, or as the Commissioner may require. 
(5) When the requirements of subsection (4) of this section 
have been complied with, if the Commissioner, after consid-IP 1Nl 1 INZL/T 11 
Page 32 
R.S. Val. 11 Trade Marks Act 1953 593 
31 
ering the information furnished to him under that subsection, 
is satisfied that in all the circulllstances the use of the trade 
mark in relation to the proposed goods or any of them by the 
proposed registered user subject to any conditions or restric­
tions which the Commissioner thinks proper would not be 
contrary to the public interest, the COIllmissioner Illay register 
the proposed registered user as a registered user in respect of 
the goods as to which he is so satisfied subject as aforesaid. 
(6) The Commissioner shall refuse an application under the 
foregoing provisions of this section if it appears to hiIll that 
the grant thereof would tend to facilitate trafficking in a trade 
mark. 
(7) The Commissioner shall, if so required by an applicant, 
take steps for securing that any document produced or infor­
Illation or evidence given for the purposes of an application 
under the foregoing provisions of this section (other than 
matter entered in the register) is not disclosed to any other 
person except by order of the Court. 
(8) Without prejudice to the provisions of section 41 of this 
Act, the registration of a person as a registered user-
(a) May be varied by the Commissioner as regards the goods 
in respect of which, or any conditions or restrictions 
subject to which, it has effect, on the application in 
writing in the prescribed manner of the registered 
proprietor of the trade mark to which the registra­
tion relates; 
(b) May be cancelled by the Commissioner on the applica­
tion in writing in the prescribed Illanner of the reg­
istered proprietor or of the registered user or of any 
other registered user of the trade III ark; or 
(c) May be cancelled by the Commissioner on the application 
in writing in the prescribed Illanner of any person 
on any of the following grounds, that is to say,-
(i) That the registered user has used the trade Illark 
otherwise than by way of ~he permitted use, or in 
such a way as to cause, or to be likely to cause, 
deception or confusion: 
(ii) That the proprietor or the registered user Illis­
represented, or failed to disclose, some fact material 
to the application for the registration, or that the 
circumstances have Illaterially changed since the date 
of the registration: 
(iii) That the registration ought not to have been 
effected having regard to rights vested in the appli-594 
32 Trade Marks IP/N/lINZL/T/l 
Page 33 
R.S. Vol. 11 
cant by virtue of a contract In the perfonnance of 
which he is interested. 
(9) Provision shall be made by regulations under this Act for 
the notification of the registration of a person as a registered 
user to any other registered user of the trade mark, and for 
the notification of an application under subsection (8) of this 
section to the registered proprietor and each registered user 
(not being the applicant) of the trade III ark, and for giving to 
the applicant on such an application, and to all persons to 
whom such an application is notified and who intervene in the 
proceedings in accordance with the regulations, an opportu­
nity of being heard. 
(10) The Commissioner may at any tiIlle cancel the registra­
tion of a person as a registered user of a trade mark in respect 
of any goods in respect of which the trade mark is no longer 
registered. 
(11) Any decision of the COIllIllissioner under the foregoing 
provisions of this section shall be subject to appeal to the 
Court. 
(12) Nothing in this section shall confer on a registered user 
of a trade mark any assignable or transrnissible right to the 
use thereof. 
Cf. 1939, No. 26, s. 30 
38. Proposed use of trade rrtark by corporation to be 
constituted, etc.-(l) No application for the registration of a 
trade mark in respect of any goods shall be refused, nor shall 
pennission for such registration be withheld, on the ground 
only that it appears that the applicant does not use or propose 
to use the trade mark,-
(a) If the Commissioner or the Court is satisfied that a body 
corporate is about to be constituted, and that the 
applicant intends to assign the trade mark to the cor­
poration with a view to the use thereof in relation 
to those goods by the corporation; or 
(b) If the application is accompanied by an application for 
the registration of a person as a registered user of 
the trade mark, and the Commissioner or the Court 
is satisfied that the proprietor intends it to be used 
by that person in relation to those goods and the 
Commissioner or the Court is also satisfied that that 
person will be registered as a registered user thereof 
immediately after the registration of the trade rrlark. IP/N/lINZL/T/l 
Page 34 
R.S. Val. 11 Trade Marks Act 1953 595 
33 
(2) The provisions of section 35 of this Act shall have effect, 
in relation to a trade mark registered under the power con­
ferred by subsection (1) of this section, as if for the reference 
in paragraph (a) of subsection (1) of the said section 35 to inten­
tion on the part of an applicant for registration that a trade 
mark should be used by him there were substituted a reference 
to intention on his part that it should be used by the cor­
poration or registered user concerned. 
(3) The ComlTIissioner or the Court may, as the condition of 
the exercise of the rower conferred by subsection (1) of this 
section in favour 0 an applicant who relies on intention to 
assign to a corporation as aforesaid, require him to give secu­
rity for the costs of any proceedings before the Commissioner 
or the Court relative to any opposition or appeal, and in 
default of such security being duly given may treat the appli­
cation as abandoned. 
(4) Where any trade mark is registered in respect of ~y 
goods under the power conferred by subsection (1) of this sec­
tion in the nalTIe of an applicant who relies on intention to 
assign to a corporation as aforesaid, then,· unless within such 
period as may be prescribed, or within such further period not 
exceeding 6 months as the ComlTIissioner lTIay on application 
being made to him in the prescribed lTIanner allow, the cor­
poration has been registered as the proprietor of the trade 
mark in respect of those goods, the registration shall cease to 
have effect in respect thereof at the expiration of that period, 
and the ComlTIissioner shall amend the register accordingly. 
cr 1939, No. 26, s. 31 
39. Use of one of associated or substantially identical 
trade IDarks equivalent to use of another-( 1) Where under 
the provisions of this Act use of a registered trade mark is 
required to be proved for any purpose, the Commissioner or 
the Court, as the case may be, may, if and so far as the Com­
missioner or the Court thinks right, accept use of an associated 
registered trade mark, or of the trade mark with additions or 
alterations not substantially affecting its identity as an equiv­
alent for the use required to be proved. 
(2) The use of the whole of a registered trade mark shall for 
the purposes of this Act be deemed to be also a use of any 
registered trade mark, being a part thereof, registered in the 
name of the sarne proprietor by virtue of subsection (1) of 
section 30 of this Act. 
er. 1939, No. 26, s. 32 IP 1Nl 1 INZL/T 11 
Page 35 
596 Trade Marks R.S. Val. 11 
34 
40. Use of trade lIl.ark for export trade-The application 
in New Zealand of a trade mark to goods to be exported frOIIl 
New Zealand, and any other act done in New Zealand in rela­
tion to goods to be so exported which, if done in relation to 
goods to be sold or otherwise traded in within New Zealand, 
would constitute use of a trade mark therein, shall be deemed 
to constitute use of the trade mark in relation to those goods 
for any purpose for which the use is material under this Act 
or at common law. 
C£ 1939, No. 26, s. 33 
Rectification and Correction cif the Register 
41. General power to rectify entries in register-(l) Any 
person aggrieved by the non-insertion in or oIIlission from the 
register of any entry, or by any entry made in the register 
without sufficient cause, or by any entry wrongly remaining 
on the register, or by any error or defect in any entry in the 
register, may apply in the prescribed manner to the Court or, 
at the option of the applicant and subject to the provisions of 
section 67 of this Act, to the Commissioner, and the Court or 
the Commissioner, as the case may be, may make such order 
for making, expunging, or varying the entry as the Court or 
the Commissioner may think ht. 
(2) The Court or the Commissioner, as the case may be, may 
in any proceeding under this section decide any question that 
it may be necessary or expedient to decide in connection with 
the rectification of the register. 
(3) In case of fraud in the registration, assignIIlent, or trans­
mission of a registered trade mark, the Commissioner may 
himself apply to the Court under the provisions of this section. 
(4) Any order of the Court rectifying the register shall direct 
that notice of the rectification shall be served in the prescribed 
manner on the Commissioner, and the Commissioner shall on 
receipt of the notice rectify the register accordingly. 
(5) The power to rectify the register conferred by this section 
shall include power to remove a registration in Part A of the 
register to Part B. 
(6) Notice shall be given to the Commissioner of any appli­
cation made to the Court under this section by any other 
person. 
C£ 1 939, No. 26, s. 34 IP/NI 1 INZL/TI 1 
Page 36 
R.S. Vol. 11 Trade Marks Act 1953 597 
35 
42. Power to expunge or vary registration for breach of 
condition-On application by any person aggrieved to the 
Court, or, at the option of the applicant and subject to the 
provisions of section 67 of this Act, to the Commissioner, or 
on application by the Commissioner to the Court, the Court 
or the Commissioner, as the case may be, may make such 
order as is thought fit for expunging or varying the registra­
tion of a trade mark on the ground of any contravention of, 
or failure to observe, a condition entered on the register in 
relation thereto. 
C£ 1939, No. 26, s. 35 
48. Entries in register-(l) The Commissioner may, on 
request made m the prescribed manner by the registered 
proprietor, -
(a) Enter any change in the name, address, or description of 
the person who is registered as proprietor of a trade 
mark; or 
(b) Cancel the entry of a trade mark on the register; or 
(c) Strike out any goods or classes of goods from those in 
respect of which a trade mark is registered; or 
(d) Enter a disclaimer or memorandum relating to a trade 
mark which does not in any way extend the rights 
given by the existing registration of the trade mark. 
(2) The Commissioner may, on request made in the pre­
scribed manner by a registered user of a trade mark, enter 
any change in the name, address, or description of the reg­
istered user. 
(3) Any decision of the Commissioner' under this section 
shall be subject to appeal to the Court. 
Cf. 1939, No. 26, s. 36 
44. Correction of errors-(l) Where a mistake exists in the 
register of trade marks or in any document issued under this 
Act by reason of any error or omission on the part of the 
Patent Office, the Commissioner may, in accordance with the 
provisions of this section, correct the mistake, and for that 
purpose may require the production of the document. 
(2) Where the Commissioner proposes to make any such cor­
rection as aforesaid he shall give notice of the proposal to the 
persons who appear to him to be concerned, and shall give 
them an opportunity to be heard before making the 
correction. 598 
36 Trade M arks IP/N/I/NZL/T/l 
Page 37 
R.S. VDl. 11 
(3) Where a mistake exists in the register of trade marks, or 
in any application for registration of a trade mark or other 
document filed in pursuance of such an application, or in any 
proceedings in connection with any trade mark, by reason of 
an error or an omission on the part of the proprietor of the 
trade mark or of the applicant for registration of the trade 
mark or of any other person concerned, a correction may be 
made in accordance with the provisions of this section upon 
a request in writing by any person interested and payment of 
the prescribed fee. If it appears to the Commissioner that the 
correction would materially alter the meaning or scope of the 
document to which the request relates and ought not to be 
made without notice to persons likely to be affected thereby, 
he shall require notice of the nature of the proposed correction 
to be advertised in the prescribed manner. 
(4) Within the prescribed time after any such advertisement 
as aforesaid, any person interested may give notice to the 
Commissioner of opposition to the request, and where any 
such notice of opposition is given the Commissioner shall give 
notice thereof to the person by whom the request was made, 
and shall give to him and to the opponent an opportunity to 
be heard before he decides the case. 
(5) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. 1921-22, No. 18, s. 121; 1939, No. 26, s.36; 1946, 
No. 32, s. 7 
45. Alteration of registered trade tnark-(I} The regis­
tered proprietor of a trade mark Illay apply in the prescribed 
manner to the Commissioner for leave to add to or alter the 
trade mark in any lllanner not substantially affecting the iden­
tity thereof, and the Commissioner Illay refuse leave or may 
grant it on such terms and subject to such limitations as he 
may think fit. 
(2) The Commissioner Illay cause an application under this 
section to be advertised in the prescribed manner in any case 
where it appears to him that it is expedient so to do, and 
where he does so, if within the prescribed time from the date 
of the advertisement any person gives notice to the Commis­
sioner in the prescribed Illanner of opposition to the appli­
cation, the COlTImissioner shall, after hearing the parties if so 
required, decide the matter. 
(3) Any decision of the Comrnissioner under this section 
shall be subject.to appeal to the Court. IP IN I lINZL/T 11 
Page 38 
R.S. Va!. 11 Trade Marks Act 1953 599 
37 
(4) Where leave as afore~aid is granted, the trade mark as 
altered shall be advertised in the prescribed manner, unless it 
has already been advertised, in the form to which it has been 
altered, in an advertisement under subsection (2) of this 
section. 
C£ 1939, No. 26, s. 37 
46. Adaptation of entries in register to atnended or sub­
stituted classification of goods-(I) Subject to any regula­
tions under this Act, the Commissioner may from time to time 
amend the register, whether by making or expunging or vary­
ing entries therein, so far as may be requisite for the purpose 
of adapting the designation therein of the goods or classes of 
goods in respect of which trade marks are registered to any 
amended or substituted classification that may be prescribed. 
(2) The Commissioner shall not, in exercise of any power 
conferred on him for the purpose aforesaid, make any amend­
ment of the register that would have the effect of adding any 
goods or classes of goods to those in respect of which a trade 
mark is registered (whether in one or more classes) imIlledi­
ately before the aIllendrnent is to be made, or of antedating 
the registration of a trade Illark in respect of any goods: 
Provided that this subsection shall not have effect in relation 
to goods as to which the COIllIllissioner is satisfied that COIll­
pliance with this subsection in relation thereto would involve 
undue cOIllplexity and that the addition or antedating, as the 
case Illay be, would not affect any substantial quantity of 
goods and would not substantially prejudice the rights of any 
person. 
(3) A proposal for the aIllendment of the register for the 
purpose aforesaid shall be notified to the register proprietor 
of the trade mark affected, shall be subject to appeal by the 
registered proprietor to the Court, shall be advertised with any 
Illodifications, and may be opposed before the ComIllissioner 
by any person aggrieved on the ground that the proposed 
aIllendment contravenes the provisions of subsection (2) of this 
section, and the decision of the Commissioner on any such 
opposition shall be subject to appeal to the Court. 
Cf. 1939, No. 26, s. 38 600 
38 Trade Marks 
Certification Trade Marks IP/N/I/NZL/T/l 
Page 39 
R.S. Vol. 11 
47. Certification trade tn.arks-(1) A mark adapted in rela­
tion to any goods to distinguish in the course of trade goods 
certified by any person in respect of origin, material, mode of 
manufacture, quality, accuracy, or other characteristic, from 
goods not so certified shall be registrable as a certification 
trade mark in Part A of the register in respect of those goods 
in the name, as proprietor thereof, of that person: 
Provided that a mark shall not be so registrable in the name 
of a person who carries on a trade in goods of the kind 
certified. 
(2) In determining whether a mark is adapted to distinguish 
as aforesaid, the C<?mmissioner may have regard to the extent 
to which-
(a) The mark is inherently adapted to distinguish as aforesaid 
in relation to the goods in question; and 
(b) By reason of the use of the mark or of any other cir­
cumstances, the mark is in fact adapted to distinguish 
as aforesaid in relation to the goods in question. 
(3) Subject to the provisions of subsections (4) to (6) of this 
section, and of sections 11 and 12 of this Act, the registration 
of a person as proprietor of a certification trade mark in 
respect of any goods shall, if valid, give to that person the 
exclusive right to the use of the trade mark in relation to those 
goods, and, without prejudice to the generality of the fore­
going words, that right shall be deemed to be infringed by 
any person who, not being the proprietor of the trade mark 
or a person authorised by him under the regulations in that 
behalf using it in accordance therewith, uses a mark identical 
with it or so nearly resembling it as to be likely to deceive or 
cause confusion, in the c9urse of trade, in relation to any 
goods in respect of which it is registered, and in such manner 
as to render the use of the mark likely to be taken either-
(a) As being use as a trade mark; or 
(b) In a case in which the use is use upon the goods or in 
physical relation thereto or in an advertising circ~lar 
or other advertisement issued to the public, as 
irnporting a reference to some person having the 
right either as proprietor or by his authorisation 
under the relevant regulations to use the trade mark 
or to goods certified by the proprietor. 
(4) The right to the use of a certification trade rnark given 
by registration as aforesaid shall be subject to any conditions 
or lirnitations entered on the register and shall not be deerned IP IN I lINZL/T 11 
Page 40 
R.S. Vol. 11 Trade Marks Act 1953 601 
39 
to be infringed by the use of any such mark as aforesaid in 
any mode, in relation to goods to be sold or otherwise traded 
in in any place, in relation to goods to be exported to any 
market, or in any other circumstances, to which, having regard 
to any such limitations, the registration does not extend. 
(5) The right to the use of a certification trade mark given 
by registration as aforesaid shall not be deemed to be infr­
inged by the use of any such mark as aforesaid by any 
person-
(a) In relation to goods certified by the proprietor of the 
trade mark if, as to those goods or a bulk of which 
they form part, the proprietor or another in accord­
ance with his authorisation under the relevant regu­
lations has applied the trade mark and has not 
subsequently removed or obliterated it, or the pro­
prietor has at any time expressly or impliedly con­
sented to the use of the trade mark; or 
(b) In relation to goods adapted to form part of, or to be 
accessory to, other goods in relation to which the 
trade mark has been used without infringement of 
the right given as aforesaid or might for the time 
being be so used, if the use of the mark is reasonably 
necessary in order to indicate that the goods are so 
adapted and neither the purpose nor the effect of 
the use of the mark is to indicate otherwise than in 
accordance with the fact that the goods are certified 
by the proprietor: 
Provided that paragraph (a) of this subsection shall not have 
effect in the case of use consisting of the application of any 
such mark as aforesaid to any goods, notwithstanding that 
they are such goods as are mentioned in that paragraph, if 
such application is contrary to the relevant regulations. 
(6) Where a certification trade mark is one of 2 or more 
registered trade marks that are identical or nearly resemble 
each other, the use of any of those trade marks in exercise of 
the right to the use of that trade mark given by registration 
shall not be deeIlled to be an infringement of the right so given 
to the use of any other of those trade marks. 
ef. 1939, No. 26, s. 39 
As to the registration of standard marks as certification trade marks, see s. 24 of the 
Standards Act 1965. 
A mark registered under this section is within the definitions of "certified trade mark" 
and "trade mark" under the Merchandise Marks Act 1954. 602 
40 Trade M arks JP IN 11 INZL/T 11 
Page 41 
R.S. Val. 11 
48. Regulations in respect of certification trade tnarks­
There shall be deposited at the Patent Office in respect of 
every trade mark registered upon an application under section 
47 of this Act regulations approved by the Commissioner for 
goveITling the use thereof, which shall include provisions as to 
the cases in which the. proprietor is to certify goods and to 
authorise the use of the trade mark, and may contain any 
other provisions that the Commissioner may require or pennit 
to be inserted therein (including provisions conferring a right 
of appeal to the Commissioner against any refusal of the pro­
prietor to certify goods or to authorise the use of the trade 
mark in accordance with the regulations). Regulations so 
deposited shall be open to inspection in like manner as the 
register. 
C£ 1939, No. 26, s. 39 (7) 
49. Applications for registration of certification trade 
tnarks-(l) An application for the registration of a mark under 
section 4 7 of this Act shall be made to the Commissioner in 
writing in the prescribed manner by the person proposed to 
be registered as the proprietor thereof. 
(2) An applicant for the registration of a mark under the said 
section 4 7 shall transmit to the Commissioner draft regulations 
for governing the use thereof at such time before the decision 
of the Commissioner on the application as he may require in 
order to enable him to consider the draft. 
(3) Subject to the provisions of this Act, the Commissioner 
may refuse the application, or may accept it and approve the 
regulations either without modification and unconditionally or 
subject to any conditions or limitations, or to any amendments 
or modifications of the application or of the regulations which 
he thinks requisite. 
(4) The provisions of subsections (4) to (7) of section 26 of 
this Act shall have effect in relation to an application under 
the said section 47 as they have effect in relation to an appli­
cation under subsection (1) of the said section 26. 
(5) In dealing with an application under the said section 47 
the Commissioner or the Court, as the case maybe, shall have 
regard to the like considerations, so far as relevant, as if the 
application were an application under section 26 of this Act 
and to any other considerations relevant to applications under 
the said section 47, including the desirability of securing that 
a certification trade mark shall comprise some indication that IP/NI1 INZL/TI1 
Page 42 
R.S. Vol. 11 Trade Marks Act 1953 603 
41 
it is such a trade mark, and including also the following matters, 
that is to say: 
(a) Whether the applicant is competent to certify the goods 
in respect of which the mark is to be registered; and 
(b) Whether the draft regulations are satisfactory; and 
(c) Whether in all the circumstances the registration applied 
for would be to the public advantage. 
Cf. 1939, No. 26, First Schedule, clause 1 
50. AdvertiselIl.ent of applications to register certifica­
ton trade Dl.arks-When an application under section 47 of 
this Act has been accepted, the Commissioner shall, as soon 
as may be after the acceptance, cause the application as 
accepted to be advertised in the prescribed manner, and the 
provisions of subsections (2) to (11) of section 27 of this Act 
shall have effect in relation to the registration of the mark as 
if the application had been an application under section 26 of 
this Act. 
cr 1939, No. 26, First Schedule, clause 2 
51. Alteration of regulations in respect of certification 
trade lIlarks-(l) The regulations deposited in respect of a 
certification trade mark may, on the application of the regis­
tered proprietor, be altered by the Commissioner. 
(2) The COlTIrnissioner may cause an application for an alter­
ation under this section to be advertised in any case where it 
appears to him that it is expedient so to do, and, where he 
causes an application to be advertised, if within the prescribed 
time from the date of the advertisement any person gives 
notice to the Commissioner of opposition to the application, 
the Commissioner shall not decide the matter without giving 
the parties an opportunity of being heard. 
Cf. 1939, No. 26, First Schedule, clause 3 
52. Cancellation or variation of registration of certifi­
cation trade tnark-(l) On the application in the prescribed 
manner of any person aggrieved, or of his own motion, the 
Commissioner (subject to the provisions of section 56 of this 
Act) may make such order as he thinks fit for expunging or 
varying any entry in the register relating to a certification 
trade mark, or for varying the deposited regulations on the 
ground-IP/NI 1 INZL/TI 1 
Page 43 
604 Trade Marks R.S. Val. 11 
42 
(a) That the proprietor is no longer competent, in the case 
of any of the goods in respect of which the trade 
mark is registered, to certify those goods; or 
(b) That the proprietor has failed to observe a provision of 
the deposited regulations to be observed on his part; 
or 
(c) That it is no longer to the public advantage that the trade 
mark should be registered; or 
(d) That it is requisite for the public advantage that, if the 
trade mark remains registered, the regulations 
should be varied. 
(2) Any decision of the Commissioner under this section 
shall be subject to appeal to the Court. 
Cf. 1939, No. 26, First Schedule, clause 4 
53. No costs on appeal against refusal to certify goods­
Notwithstanding anything in section 62 of this Act, the Com­
missioner shall not have any jurisdiction to award costs to or 
against any party on an appeal to him against a refusal of the 
proprietor of a certification trade mark to certify goods or to 
authorise the use of the trade mark. 
Cf. 1939, No. 26, First Schedule, clause 5 
54. Certain provisions of Act not to apply to certifica­
tion trade tnarks-The following provisions of this Act shall 
not have effect in relation to a certification trade mark, that 
is to say, section 8, section 10, section 14, sections 26 and 27 
(except as expressly applied by sections 49 to 54), subsections 
(4) to (8) of section 31, sections 35 to 38, section 78, and any 
provisions the operation of which is limited by the terms 
thereof to registration in Part B of the register. 
Cf. 1939, No. 26, First Schedule, clause 6 
GENERAL 
Powers and Duties cif Commissioner 
55. Prelitninary advice by Cotntnissioner as to distinc­
tiveness-(I) It shall be a function of the Commissioner under 
this Act to give to a person who proposes to arply for the 
registration of a trade mark in Part A or Part B 0 the register 
advice as to whether the trade mark appears to the Commis­
sioner prima facie to be inherently adapted to distinguish or 
capable of distinguishing, as the case may be. IP/N/I/NZL/T/l 
Page 44 
R.S. Vol. 11 Trade Marks Act 1953 605 
43 
(2) Any such person who is desirous of obtaining such advice 
shall make application to the Cornrnissioner therefor in the 
prescribed rnanner. 
(3) If, on an application for the registration of a trade rnark 
as to which the Commissioner has given advice as aforesaid 
in the affirmative made within 3 months after the advice is 
given, the Commissioner, after further investigation or consid­
eration, ·gives notice to the applicant of objection on the 
ground that the trade mark is not adapted to distinguish, or 
capable of distinguishing, as the case rrlay be, the applicant 
shall be entitled, on giving notice of withdrawal of the appli­
cation within the prescribed period, to have repaid to him any 
fee paid on the filing of the application. 
Cf. Trade Marks Act 1938, s. 42 (U.K.) 
56. Hearing before exercise of Cotnrnissioner's discre­
tion-Where any discretionary or other power is given to the 
Commissioner by this Act, or by any regulations made there­
under, he shall not ex.ercise that power adversely to any per­
son without (if duly required so to do within the prescribed 
time) giving to the person an opportunity of being heard. 
Cf. 1939, No. 26, s. 40 
57. Lost certificates-The Commissioner may, if satisfied 
that a certificate of registration has been lost or destroyed or 
in any other case in which he thinks it expedient and upon 
application in the prescribed manner and on payment of the 
prescribed fee, issue a further certificate of registration. 
58. COlDtnissioner tnay dispense with production of 
probate or letters of adtninistration in certain cases­
(1~ For the: purposes of this section, unless the context other­
WIse requIres,-
"Deceased proprietor" means a registered proprietor of 
any trade mark who has died, whether before or after 
the commencement of this Act; and includes any 
applicant for the registration of a trade mark who has 
died before it is registered, whether before or after 
the commencement of this Act: 
"Qualified person", in relation to any deceased proprie­
tor, means a person who satisfies the Commissioner­
Ca) That he has obtained or is entitled to obtain pro­
bate of the will of the deceased proprietor or letters 
of administration in his estate in the place where the 606 
44 Trade Marks IP IN 11 INZL/T 11 
Page 45 
R.S. Vol. 11 
deceased proprietor was domiciled at his death, or 
that he is the legal representative of the deceased pro­
prietor in that place: 
(b) That probate of the will of the deceased propri­
etor or letters of administration in his estate have not 
been granted or resealed in New Zealand: 
(c) That the Commissioner of Inland Revenue is sat­
isfied that no [estate duty] will bejayable in New 
Zealand in the estate of the decease proprietor: 
(d) That the interests of the creditors of the deceased 
proprietor, and of all persons beneficially interested 
under his will or on his intestacy, will be adequately 
safeguarded if the Commissioner of Trade Marks reg­
isters the qualified person as the proprietor of the 
trade mark. 
(2) Upon application in the prescribed manner and payment 
of the prescribed fees, the Commissioner, in his discretion and 
without requiring the production of probate or letters of 
administration, Illay,-
(a) Where the registered proprietor of any trade Illark has 
died, whether before or after the comITIencement of 
this Act, register any qualified person as the propri­
etor of the trade mark: 
(b) Where an applicant for the registration of a trade mark 
has died before the registration of the trade mark, 
whether before or after the commencement of this 
Act, . allow any qualified person to complete the 
application and may register that person as the pro­
prietor of the trade mark. 
(3) Every qualified person who is registered under this sec­
tion as the proprietor of a trade mark shall hold it subject to 
all existing interests and equities affecting it. 
(4) Nothing in [section 70 or section 73 of the AdIllinistra­
tion Act 1969] shall be deemed to restrict the operation of 
this section. 
Cf. 1 94 7 , No. 37, s. 5 
In subs. (1) (c) the reference to estate duty was substituted for a reference to death 
duty by s. 100 (6) of the Estate and Gift Duties Act 1968, in relation to the estates of 
persons dying after the commencement of that Act. 
In subs. (4), ss. 70 and 73 of the Administration Act 1969, being the corresponding 
enacttnents in force at the date of this reprint, have been substituted for ss. 49 and 52 
of the repealed Administration Act 1952. 
As to vesting orders under s. 59 of the Trustee Act 1956 in respect of trade marks, 
see s. 60 of that Act. 
As to payment without administration, see s. 67 (l) of the Administration Act 1969. IP/NI 1 INZL/TI 1 
Page 46 
R.S. Vol. 11 Trade Marks Act 1953 
Legal Proceedings and Appeals 607 
45 
59. Registration to be pritna facie evidence of validity­
In all legal proceedings relating to a registered trade mark 
(including applications under section 4 1 of this Act) the fact 
that a person is registered as proprietor of the trade mark shall 
be prima facie evidence of the validity of the original regis­
tration of the trade mark and of all subsequent assignments 
and transmissions thereoE 
CE 1939, No. 26, s. 41 
60. Trade usage, etc., to be considered-In any action or 
proceeding relating to a trade mark or trade name, the Court 
or the Commissioner, as the case may be, shall admit evidence 
of the usages of the trade concerned and of any relevant trade 
mark or trade name or get-up legitimately used by other 
persons. 
C£ 1939, No. 26, s. 43 
61. Certificate of validity-In any legal proceeding in 
which the validity of the registration of a registered trade mark 
comes into question and is decided in favour of the proprietor 
of the trade mark, the Court may certify to that effect, and if 
it so certifies, then, in any subsequent legal proceeding in 
which the validity of the registration comes into question, the 
proprietor of the trade mark on obtaining a final order or 
judgment in his favour shall have his full costs, charges, and 
expenses as between solicitor and client, unless in the subse­
quent proceeding the Court certifies that he ought not to have 
them. 
C£ 1939, No. 26, s. 42 
62. Costs and security for costs-(I) The Commissioner 
may, in any proceedings before him under this Act, by order 
award to any party such costs as ·he luay consider reasonable, 
and direct how and by what parties they are to be paid; and 
any such order may be entered as a judgment of the Court 
and, with the leave of the Court, may be enforced accordingly. 
(2) If any party to any proceedings under this Act before the 
Commissioner or the Court neither resides nor carries on busi­
ness in New Zealand, the Commissioner or the Court may 
require him to give security for the costs of the proceedings, 
and in default of such security being given may treat the pro­
ceedings as abandoned by him and determine the matter 
accordingly. 
C£ 1921-22, No. 18, s. 127 608 
46 Trade Marks IP/NII/NZL/TI 1 
Page 47 
R.S. Vol. 11 
68. Costs of Cotntnissioner in proceedings before 
Court-In all proceedings before the Court under this Act the 
costs of the Commissioner shall be in the discretion of the 
Court. 
C£ 1921-22, No. 18, s. 142 
64. Cotntnissioner's appearance in proceedings involv­
ing rectification-(l) In any legal proceeding in which the 
relief sought includes alteration or rectification of the register, 
the Commissioner shall have the right to appear and be heard, 
and shall appear if so directed by the Court. 
(2) Unless otherwise directed by the Court, the Commis­
sioner instead of appearing and being heard may submit to 
the Court a statement in writing signed by him, giving par­
ticulars of the proceeding before him in relation to the matter 
in issue or of the grounds of any decision given by him affect­
ing it or of the practice of the Patent Office in like cases or of 
such other m.atters relevant to the issues, and within his knowl­
edge as Com.missioner, as he thinks fit, and the statement shall 
be deemed to form part of the evidence in the proceeding. 
C£ 1921-22, No. 18, s. 141 
65. Court's power to review COIDtnissioner's decision­
The Court, in dealing with any question of the rectification of 
the register (including all applications under the provisions of 
section 41 of this Act~, shall have power to review any decision 
of the Commissioner relating to the entry in question or the 
correction sought to be made. 
C£ 1939, No. 26, s. 44 
66. Appeals to High Court-(l) Every appeal under this 
Act against a decision of the Commissioner shall be to the 
[High Court]. 
(2) Notice of every such appeal shall be filed in the Court 
and served upon the Commissioner within 28 days after the 
day on which the decision appealed against was given. 
(3) In any such appeal the Court shall have and may exercise 
the same discretionary powers as are conferred upon the 
Cornm.issioner. 
C£ 1921-22, No. 18, s. 140 
In subs. (1) the reference to the High Court was substituted for a reference to the 
Supreme Court by s. 12 of the Judicature Amendment Act 1979. IP/NI 1 INZL/TI 1 
Page 48 
R.S. Vol. 11 Trade Marks Act 1953 609 
47 
67. Procedure in cases of option to apply to Court or 
CotnITlissioner-Where under any of the foregoing provi­
sions of this Act an applicant has an option to make an appli­
cation either to the Court or to the Commissioner-
(a) If an action concerning the trade mark in question is 
pending, the application must be made to the Court: 
(b) If in any other case the application is made to the Com­
missioner, he may, at any stage of the proceedings, 
refer the application to the Court, or he may, after 
hearing the parties, determine the question between 
them, subject to appeal to the Court. 
Cf. 1939, No. 26, s. 45 
Evidence 
68. Mode of gtvlng evidence-(l) Subject to regulations 
under this Act, in any proceeding under this Act before the 
Commissioner the evidence shall be given by affidavit or statu­
tory declaration in the absence of directions to the contrary; 
but in any case in which the Commissioner thinks it right so 
to do he may take evidence viva voce instead of or in addition 
to evidence by affidavit or declaration, or allow any deponent 
or declarant to be cross-examined 011. his affidavit or declara­
tion. Any such statutory declaration may, in the case of appeal, 
be used before the Court instead of evidence by affidavit, and 
if so used shall have all the incidellts and consequences of 
evidence by affidavit. 
(2) In any proceeding under this Act before the Com,mis­
sioner he may administer oaths to any witness, and may in 
the prescribed manner require the attendance of any witness 
and discovery and production of documents. 
(3) Any evidence given on oath before the Commissioner 
shall be deemed to be given in a judicial proceeding for the 
purposes of [sections 108 and 109 of the Crimes Act 1961]. 
(4) [Section III of the Crimes Act 1961] shall apply to every 
affidavit and statutory declaration made for the purposes of 
this Act. 
(5) The Governor-General may from time to time, by Order 
in Council, make regulations-
(a) Prescribing the manner in which statutory declarations in 
respect of proceedings under this Act may be made 
and subscribed: 
(b) Prescribing the manner in which witnesses may be 
required to attend and give evidence in any pro­
ceedings before the Commissioner: IP/N/1/NZL/TIl 
Page 49 
610 Tradt, Marks R.S. Vbl. 11 
48 
(c) Making provision for the payment of the expenses of such 
witnesses: 
(d) Imposing fines not exceeding [$100] for the failure or 
refusal of any person so to attend and give evidence. 
Cf. 1921-22, No. 18, s 129 
In subss. (3) and (4), ss. 108, 109, and 111 of the Crimes Act 1961, being the corre· 
sponding enactrnents in force at the date of this reprint, have been substituted respect· 
ively for ss. 130, 131, and 133 of the repealed Crimes Act 1908. 
In subs. (5) (d) the SUIll of SI 00 was substituted for £50 by s. 7 of the DeciIllal Currency 
Act 1964. 
69. Evidence of entries, docuInents, etc.-(I) A certificate 
sealed with the seal of the Patent Office and purporting to be 
signed by the Commissioner certifying that any entry which 
he is authorised by or under this Act to make has or has not 
been made, or that any other thing which he is so authorised 
to do has or has not been done, shall be prima facie evidence 
of the matters so certified. 
(2) A copy of any entry in the register or of any document 
kept in the Patent Office or of any certificate of registration, 
or an extract from any such register or document, sealed with 
the seal of the Patent Office, and purporting to be certified by 
the Commissioner, shall be admitted in evidence without fur­
ther proof and without production of the original. Any person 
requiring such a certified copy as aforesaid shall be entitled to 
obtain it on payment of the prescribed fee. 
(3) Where by this Act or otherwise by law the COIllmissioner 
is directed, authorised, or empowered to do, exercise, or per­
form any act, power, function, or duty, any notification in the 
Journal of the doing, exercise, or performance of any such act, 
power, function, or duty shall be prima facie evidence that it 
was lawfully done, exercised, or performed. 
Cf. 1921-22, No. 18, ss. 130, 131; 1946, No. 32, s. 6 (3) 
Offences 
70. Falsification of register, etc.-(I) Every person who 
makes or causes to be made a false entry in the register or a 
writing falsely purporting to be a copy of an entry in the reg­
ister, or produces or tenders or causes to be produced or tend­
ered in evidence any such writing, knowing the entry or 
writing to be false, commits an offence, and shall be liable on 
conviction on indictment to imprisonment for a term not 
exceeding 2 years. 
(2) Repealed by s. 214 (1) cif the Summary Proceedings Act 1957. 
Cf. 1921-22, No. 18, s. 143 
As to the summary jurisdiction of a District Court Judge under this section, see s. 6 
of the Summary Proceedings Act 1957. IP IN 11 INZL/T 11 
Page 50 
R.S. Val. 11 Trade Marks Act 1953 611 
49 
71. False representation of a trade lDark as registered­
(1) Every person who makes a representation-
(a) With respect to a mark not being a. registered trade mark, 
to the effect that it is a registered trade mark; or 
(b) With respect to a part of a registered trade mark not 
being a part separately registered as a trade mark, 
to the effect that it is so registered; or 
(c) To the effect that a registered trade mark is registered in 
respect of any goods in respect of which it is not 
registered; or 
(d) To the effect that the registration of a trade mark gives 
an exclusive right to the use thereof in any circum­
stances in which, having regard to limitations 
entered on the register, the registration does not give 
that right,-
commits an offence and shall be liable on summary conviction 
to a fine not exceeding [$40]. 
(2) For the purposes of this section the use in New Zealand 
in relation to a trade mark of the word "registered", or of 
any other word referring, whether expressly or impliedly, to 
registration, shall be deemed to import a reference to regis­
tration in the register, except-
(a) Where that word is used in physical association with 
other words delineated in characters at least as large 
as those in which that word is delineated and indi­
cating that the reference is to registration as a trade 
mark under the law of a country outside New 
Zealand, being a country under the law of which the 
registration referred to is in fact in force; or 
(b) Where that word (being a word other than the word 
"register'ed") is of itself such as to indicate that the 
reference is to such registration as last aforesaid; or 
(c) Where that word is used in relation to a mark registered 
as a trade mark under the law of a country outside 
New Zealand and in relation to goods to be exported 
to that country. 
ef. 1939, No. 26, s. 46 
In subs. (1) the sum of $40 was substituted for £20 by s. 7 of the Decimal Currency 
Act 1964. 612 
50 Trade Marks 
International Agreements~ etc. JP IN I lINZL/T /l 
Page 51 
R.S. Vol. 11 
72. Orders in Council as to convention countries­
(1) The Governor-General may, with a view to the fulfilment 
of a treaty, convention, arrangement, or engagement, by 
Order in Council, declare that any country specified in the 
Order is a convention country for the purpose of this Act: 
Provided that a declaration may be made as aforesaid for 
the purposes either of all or of some only of the provisions 
of this Act, and a country in the case of which a declaration 
made for the purposes of some only of the provisions of this 
Act is in force shall be deemed to be a convention country 
for the purposes of those provisions only. 
(2) For the purposes of subsection (1) of this section, every 
territory for whose international relations another country is 
responsible shall be deemed to be a country in the case of 
which a declaration may be made under that subsection. 
Cf. 1939, No. 26, s. 54 
For an order made under this section. see S.R. 1968/201. 
78. International arrangetnents-(I) Any person who has 
applied for the registration of a trade mark in a convention 
country, or his legal representative or assignee, shall be 
entitled to registration of his trade mark under this Act in 
priority to other applicants, and the registration shall have the 
same date as the date of the application in the convention 
country: 
Provided that-
(a) The afplication is made within 6 months from the date 
o the application in the convention country; and 
(b) Nothing in this section shall entitle the proprietor of the 
trade mark to recover damages for infringements 
happening before the actual date on which his trade 
mark is registered in New Zealand. 
(2) The registration of a trade mark shall not be invalidated 
by reason only of the use of the trade mark in New Zealand 
during the period specified in subsection (1) of this section as 
that within which the application may be made. 
(3) The application for the registration of a trade mark under 
this section must be made in the same manner as an ordinary 
application under this Act. 
(4) Where a person has applied for registration of a trade 
mark by an application which,-
(a) In accordance with the terms of a treaty subsisting 
between any 2 or more convention countries, is IP/N/lINZL/T/l 
Page 52 
R.S. Val. 11 Trade Marks Act 1953 613 
51 
equivalent to an application duly made in anyone 
of those convention countries; or 
(b) In accordance with the law of any convention country, 
is equivalent to an application duly made in that con­
vention country,-
he shall be deemed for the purposes of this section to have 
applied in that convention country. 
Cf. 1939, No. 26, s. 55 
Miscellaneous 
74. Service of notices, etc., by post-(I) Any notice 
required or authorised to be given by or under this Act, and 
any application or other document so authorised or required 
to be made or filed, may be given, made, or filed by sending 
it by post in a letter addressed to the person concerned at his 
usual or last known address. 
(2) Where any notice is sent by the Commissioner to any 
person by post as aforesaid the notice shall be deemed to have 
been given at the time when the letter containing it would 
have been delivered in the ordinary course of post. 
C£ 1 921 - 2 2 , No. 1 8, s. 132 
[74A. Extension of tiIIle-(I) The Commissioner may 
extend the time prescribed in subsection (1) of section 73 of 
this Act for the filing of an application under that section on 
such terms (if any) as he thinks fit where he is satisfied that 
the circumstances warrant the extension. 
(2) Notwithstanding subsection (1) of this section," the Com­
missioner shall refuse to grant an extension of time under that 
subsection if in his opinion-
(a) The applicant or his agent has not allowed a reasonable 
margin of time for the delivery to the Patent Office, 
by post or otherwise, of any documents relating to 
the matter in respect of which the application for the 
extension of time is made; or 
(b) The applicant or his agent has in any other way failed 
to act with due diligence and pnIdence in respect of 
such matter; or 
(c) There has been undue delay in bringing the application 
for the extension of time or in prosecuting the 
application. 
(3) Every extension of time granted under this section shall 
be advertised in the Journal in the prescribed manner. IP/NlllNZL/T/l 
Page 53 
614 Trade Marks R.S. Vol. 11 
52 
(4) Where an application is made for an extension of time 
under this section by an agent on behalf of any applicant, the 
Commissioner may as a condition of granting the application 
require that written confinnation that the application is 
authorised shall be signed or executed by the applicant and 
lodged with the Commissioner within such time as the Com­
missioner specifies. 
(5) The Governor-General may from time to time, by Order 
in Council, make regulations for all or any of the following 
purposes: 
(a) Prescribing the manner of advertising in the Journal 
extensions of time granted under this section: 
(b) Prescribing the evidence that the Commissioner may 
accept in support of applications under this section: 
(c) Regulating the procedure to be followed in relation to 
applications under this section: 
(d) Prescribing the fees to be paid in respect of applications 
under this section.] 
This section was inserted by s. 2 of the Trade Marks AmendInent Act 1972. 
75. Parties not resident in New Zealand to give address 
for service-If any party to any proceedings under this Act 
before the Commissioner does not reside or carry on business 
in New Zealand, the Commissioner may by notice in writing 
require him within the prescribed time to give an address for 
service within New Zealand. If any person to whom notice is 
given as aforesaid does not comply therewith within the pre­
scribed time, the Commissioner may, if he thinks fit, treat the 
proceedings as abandoned by that person and determine the 
matter accordingly. 
76. Opening and closing of Patent Office-[(I) The Com­
missioner, from time to time by notice in the Journal, may fix 
the hours during which the Patent Office shall be open for the 
transaction of public business under this Act, and may declare 
the Patent Office closed for the transaction of public business 
on any day.] 
(2) Where the time prescribed for doing any act or taking 
any proceeding expires on a dar when the Patent Office is not 
open ... and by reason thereo the act or proceeding cannot 
be done or taken on that day, the act or proceeding shall be 
deemed to be in time if it is done or taken on the next day 
when the Patent Office is open .... 
C£ 1921-22, No. 18, s. 133 IP/NII/NZL/TI1 
Page 54 
R.S. Va!. 11 Trade Marks Act 1953 615 
53 
Subs. (1) was substituted for the original subs. (1) by s. 2 (1) of the Trade Marks Amend­
ment Act 1976. 
In subs. (2) the words "as aforesaid" were omitted in 2 places by s. 2 (2) of the Trade 
Marks Amendment Act 1976. 
[76A. Closing of Patent Office at short notice­
(1) Notwithstanding subsection (1) of section 76 .. ·of this Act, 
where, because of an eIllergency or other temporary circum­
stances, the Commissioner is satisfied that it is or will be neces­
sary or desirable to close the Patent Office on any day and it 
is not practicable to give notice of the closure in the Journal 
as required by that subsection, the COIllIllissioner III ay , with­
out giving that notice, declare the Patent Office closed for the 
transaction of public business on that day in accordance with 
the provisions of this section. 
(2) In every case where the COIllIllissioner proposes to 
declare or has declared the Patent Office closed under sub­
section (1) of this section he shall, if practicable, display a public 
notice of that fact in or on the building in which the Patent 
Office is situated. 
(3) As soon as practicable thereafter the ComIllissioner shall 
also cause a copy of the fublic notice, or (if no such notice 
was displayed) a notice 0 the exercise of· his powers under 
this section, to be published in the Journal.] 
This section was inserted by s. 3 of the Trade Marks Amendment Act 1976. 
77. Declaration by person under disability-(I) If any 
person is incapable of Illaking any declaration, or doing any­
thing required or permitted by or under this Act, because he 
is not of full age and capacity, the guardian, cOIllmittee, or 
statutory administrator (if any) of the person subject to the 
disability, or, if there is none, any person appointed by any 
Court possessing jurisdiction in respect of his property, may 
make that declaration, or a declaration as nearly correspond­
ing thereto as circumstances permit, and do that thing in the 
name and on behalf of the person subject to the disability. 
(2) An appointment may be made by the Court for the pur­
poses of this section upon the application of any person acting 
on behalf of the person subject to the disability, or of any 
other person interested in the making of the declaration or 
the doing of the thing. 
cr 1 92 1 - 2 2 , No. 1 8, s. 1 34 IP 1Nl 1 INZL/T 11 
Page 55 
616 Trade Marks R.S. Val. 11 
54 
78. Change of fonn. of trade connection not to be 
deelIl.ed to cause deception-The use of a registered trade 
mark in relation to goods between which and the person using 
it any form of connection in the course of trade subsists shall 
not be deemed to be likely to cause deception or confusion 
on the ground only that the trade mark has been, or is, used 
in relation to goods between which and that person or a pre­
decessor in title of his a different fonn of connection in the 
course of trade subsisted or subsists. 
C£ 1939, No. 26, s. 48 
79.Jointly owned trade lIl.arks-(I) Where the relations 
between 2 or more persons interested in a trade mark are 
such that no one of them is entitled as between himself and 
the other or others of them to use it except-
(a) On behalf of both or all of them; or 
(b) In relation to an article with which both or all of them 
are connected in the course of trade,-
those persons may be registered as joint proprietors of the 
trade mark, and this Act shall have effect in relation to any 
rights to the use of the trade mark vested in those persons as 
if those rights had been vested in a single person. 
(2) Subject as aforesaid, nothing in this Act shall authorise 
the registration of 2 or more persons who use a trade mark 
independently, or propose so to use it, as joint proprietors 
thereo£ 
Cf. 1939, No. 26, s. 49 
80. Trusts and equities-(I) Subject to the proVIsIons of 
this Act, equities in respect of a trade mark may been enforced 
in like manner as in respect of any other personal property. 
(2) No notice of any trust, whether expressed, implied, or 
constructive, shall be entered in the register, and the Com­
missioner shall not be affected by any such notice. 
C£ 1921-22, No. 18, s. 118; 1939, No. 26, s. 50 
81. Recognition of agents-Where by this Act any act has 
to be done by or to any person in connection with a trade 
mark or proposed trade mark or any proceedings relating 
thereto, the act may, unless otherwise prescribed, be done by 
or to an agent of that person duly authorised in the prescribed 
manner. 
Cf. Trade Marks Act 1938, s. 65 (U.K.) IP/NI1 INZL/TI1 
Page 56 
R.S. Val. 11 Trade Marks Act J 953 61 7 
55 
82. Fees-(l) There shall be paid in respect of the registra­
tion of trade marks and applications therefor, and in respect 
of other matters relating to trade marks arising under this Act, 
such fees as lllay be from time to tilne prescribed by regula­
tions made under this Act, and all such fees shall be paid into 
the Public Account to the credit of [the Consolidated 
Account]. 
(2) Any sum paid to the Comlllissioner by lllistake, or any 
sum the paYlllent of which is not required by regulations made 
under this Act, may be refunded by the Commissioner, and 
all money so refunded shall be paid out of [the Consolidated 
AccountJ without further appropriation than this Act. 
C£. 1921-22, No. 18, s. 11 7 
In subss. (I) and (2) the references to the Consolidated Account were substituted for 
references to the Consolidated Revenue Account (as substituted for a reference to the 
Consolidated Fund by s. 4 (4) of the Public Revenues Amendment Act 1963) by s. 114 (6) 
of the Public Finance Act 1977. 
8S. Annual report-'The COllllllissioner of Patents shall, in 
his annual report with respect to the operation of the Patents 
Act 1953, include a report with respect to the operation of this 
Act as if it formed a part of or was included in that Act. 
84. Savings in respect of previous Acts-(l) Subject to the 
provisions of this section and _ of section 22 of this Act, the 
validity of the original entry of a trade mark on the register 
existing at the commencement of this Act shall be determined 
in accordance with the enactments in force at the date of that 
entry, and any such trade mark shall retain its original date, 
but for all other purposes it shall be deemed to have been 
registered under this Act. 
(2) No trade lllark which was on the register at the COlll­
lllencement of this Act, and which was then a registrable trade 
mark under this Act, shall be removed from the register on 
the ground that it was not registrable under the enactments 
in force at the date of its registration. 
(3) Nothing in this Act shall be taken to have invalidated the 
original registration of a trade mark that illllllediately before 
the commencment of this Act was validly on the register. 
(4) Nothing in this Act or in any Act heretofore in force shall 
be construed as having subjected any person to any liability 
in respect of any act or thing done or olllitted before the com­
mencement of those Acts respectively to which he would not 
have been subject under the Acts then in force. JP IN 11 INZL/T 11 
Page 57 
618 Trade Marks R.S. Vol. 11 
56 
(5) Section 3 of the Patents, Designs, and Trade Marks 
Arnendrnent Act 1945 shall apply with respect to goods 
irnported into New Zealand before the cornrnencernent of this 
Act as if it had not been repealed. 
Cf. 1939, No. 26, s. 51, Second Schedule 
85. Regulations-(I) Subject to the provisions of this Act, 
the GoveITlor-General may frorn time to tirne, by Order in 
Council, rnake all such regulations as rnay in his opinion be 
necessary or expedient for giving effect to the provisions of 
this Act and for the due administration thereof. 
(2) Without liIlliting the general power conferred by subsec­
tion (1) of this section, it is hereby declared that regulations 
rnay be rnade under this section for all or any of the following 
purposes: 
(a) For regulating the practice under this Act, including the 
service of documents: 
(b) For classifying goods for the purposes of registration of 
trade marks: 
(c) For prescribing classes of persons whorn the Commis­
sioner may refuse to recognise as agents in respect 
of proceedings under this Act: 
(d) For regulating the business of the Patent Office in relation 
to trade rnarks and all things by this Act placed 
under the direction or control of the Commissioner: 
(e) For prescribing anything authorised or required by this 
Act to be prescribed by regulations. 
(3) All regulations made under this Act shall be laid before 
Parliarnent within 28 days after the date of the making thereof 
if Parliament is then in session, and, if not, shall be laid before 
Parliament within 28 days after the date of the commenCIllent 
of the next ensuing session. 
Cf. 1921-22, No. 18, s. 138; Trade Marks Act 1938, s.40 
(U.K.) 
See the Trade Marks Regulations (S.R. 1954/222). 
86. Ap'plication of Act to Tokelau-This Act shall be in 
force in L Tokelau]. 
The reference to Tokelau was substituted for a reference to the Tokelau Islands by 
s. 3 (8) of the Tokelau AITIendITIent Act 1976. 
This Act is in force in the Cook Islands; see s. 635 of the Cook Islands Act 1915, 
reprinted 1976, Vol. 4, p. 3245. 
This Act is in force in Niue; see s. 702 of the Niue Act 1966. IP IN 11 INZL/T 11 
Page 58 
R.S. Vol. 11 Trade Marks Act 1953 619 
57 
87. Repeals, atnendIIl.ents, and savings-(I) The enact­
ments specified in the Schedule to this Act are hereby 
repealed. 
(2}Repealed by s. 25 (1) cif the Merchandise Marks Act 1954. 
(3) Without limiting the provisons of the Acts Interpretation 
Act 1924, it is hereby declared that the repeal of any provision 
by this Act shall not affect any document made or any thing 
whatsoever done under the provision so repealed or under 
any corresponding former provision, and every such docu­
ment or thing, so far as it is subsisting or in force at the time 
of the repeal and could have been made or done under this 
Act, shall continue and have effect as if it had been made or 
done under the corresponding provision of this Act and as if 
that provision had been in force when the document was made 
or the thing was done. 
SCHEDULE 
Section 87 (I) 
ENACTMENTS REPEALED 
1921-22, No. 18-The Patents, Designs, and Trade Marks Act 1921-22. 
(I931 Reprint, Va!. VI, p. 656.) 
1939, No. 26-The Patents, Designs, and Trade Marks Amendment Act 
1939. 
1941, No. 26-The Statutes Amendment Act 1941: Section 58. 
1943, No. 6-The Patents, Designs, and Trade Marks Amendment Act 
1943. 
1945, No. 24-The Patents, Designs, and Trade Marks Amendment Act 
1945. 
1946, No. 32-The Patents, Designs, and Trade Marks Amendment Act 
1946. 
1947, No. 37-The Patents, Designs, and Trade Marks Amendment Act 
1947. 
1952, No. 41-The Summary Jurisdiction Act 1952: So much of Part 11 of 
the First Schedule as relates to the Patents, Designs, 
and Trade Marks Act 1921-22. 620 
58 Trade Marks JP IN 11 INZL/T 11 
'page 59 
R.S. Val. 11 
THE TRADE MARKS AMENDMENT ACT 1972 
1972, No. 108 
An Act to aJIlend the Trade Marks Act 1953 
[20 October 1972 
1. Short Title-This Act may be cited as the Trade Marks 
Amendment Act 1972, and shall be read together with and 
deemed part of the Trade Marks Act 1953 (hereinafter referred 
to as the principal Act). 
2. This section inserted s. 74A in the principal Act. 
3. This section inserted subs. (2 A) in s. 27 cif the principal Act. 
THE TRADE MARKS AMENDMENT ACT 1976 
1976, No. 124 
An Act to aJIlend the Trade Marks Act 1953 
[9 December 1 976 
1. Short Title-This Act may be cited as the Trade Marks 
Amendment Act 1976, and shall be read together with and 
deemed part of the Trade Marks Act 1953 (hereinafter referred 
to as the principal Act). 
2. (1) This subsection substituted a new subsection for subs. (1) cif 
s. 76 cif the principal Act. 
(2) This subsection amended s. 76 (2) cif the principal Act. 
3. This section inserted s. 76A in the principal Act. 
The Trade Marks Act 1953 is administered in the Department of Justice. 
WEll.INGTON. NEW ZEALAND: Printed under the authority of the 
New Zealand Govenunent by P. D. HASSELBERG. Govenunent Printer-1983 
89566E-82PTK IP/N/I/NZL/T/l 
Page 60 
1987 Trade MarJu Amendment No. 156 
ANALYSIS 
Title 
1. Short Title and commencement 
2. Interpretation 
3. No action for infringement of 
unregistered trade mark. 
4. Registration to be in respect of 
particular goods or services 
5. Right ~ven by registration in Part A. 
and mfringement thereof 
6. Right ~ven by registration in Part B, 
and mfringement thereof 
7. Saving for vested rights 
8. Saving for use of nante, address. or 
description of goods or services 
9. Distinctiveness requisite for registration 
in Part A 
10. Capability of distinguishing requisite for 
re~tration in Part B 
1 1. Prohibition of registration of identical 
and resembling trade marks 
12. Marks in respect of a class or large 
variety of goods or services 
13. Words used as name or description of 
article. substance. or service 
14. Registration of parts of trade marks and 
of trade marks as a series 
15. Powers of, and restnct!ons on, 
assignment and transmission 16. Certain trade marks to be associated so 
as to be assignable and transmissible 
as a whole omy . 
1 7. Registration of assignments and 
transmissions 
18. Removal from register and imposition 
of limitations on ground of non·use 
19. Defensive registration of well-known 
trade marks 
20. Registered users 
21. Proposed use of trade mark. by 
corporation to be constituted. etc. 
22. Entries in re~ter 
28. Adaptation of entries in register to 
antended or substituted classification 
of goods or services 
24. Certification trade marks 
25. Regulations in respect of certification 
trade marks 
26. Applications for registration of 
certification trade marlc.s. 
27. Cancellation or variation of registration 
of certification trade mark. 
28. No costs on appeal a~ainst refusal to 
certify goods or seTVlces 
29. False representation of trade mark. as 
registered 
80. Change of form of trade connection not 
to be deemed to cause deception 
81. Jointly owned trade marks 
82. Regulations 
88. Amendment to Fair Trading Act 1986 
1987, No. 156 
An Act to alDend the Trade Marks Act 1958 
. [10 July. 1987 
BE IT ENACTED by the Parliarrlent of New Zealand as follows: 
1. Short Tide and conunencelDent-( 1) This Act may be 
cited as the Trade Marks Amendment Act 1987, and shall be 
read together with and deemed part of the Trade Marks Act 
1953 (hereinafter referred to as the principal Act). 
(2) This Act shall come into for~~ on the 1st day of May 
1988. 
Public-156 Price Code: CY 2 Trade Marks Amendment IP/N/1/NZL/T/1 
Page 61 
1987, No. 156 
(3) Notwithstanding subsection (2) of this section, an 
application for the registration of a trade mark in respect of 
services may be made at any time after the 1st day of February 
1988 and before the coming into force of this Act as if this Act 
had come into force on the 1st day of February 1988, but every 
such application shall be treated as having been made 
inunediately after the coming into force of this Act. 
2. Interpretation-(I) Section 2 (I) of the principal Act is 
hereby amended by repealing the definition of the tenn 
"liInitations", and substituting tbe following definition: 
" 'LiInitations' means any limitations of the exclusive right 
to the use of a trade IDark given by the registration of 
a person as proprietor thereof, including liInitations ot that right as to-
"(a) Mode of use: 
"(b) Use in relation to goods to be sold or otherwise 
traded in, in any place within New Zealand: 
"(c) Use in relation to goods to be exported to any 
market outside New Zealand: 
"(d) Use in relation to services to be provided 
within New Zealand:". 
(2) Section 2 (I) of the principal Act is hereby further 
amended by inserting in the definition of the tenn "trade 
mark", after the word "goods" in each place where it occurs, 
the words "or services". 
(3) Section 2 of the principal Act is hereby further amended 
by repealing subsection (2), and substituting the following 
subsection: 
"(2) In this Act-
"(a) References to the use of a mark shall be construed as 
references to the use of a printed or other visual 
representation of the IYlark: 
"(b) References to the use of a mark in relation to goods shall 
be construed as references to the use of the mark 
upon, or in physical or other relation to, goods: 
"(c) References to the use of a mark in relation to services 
shall be construed as references to the use of the 
mark in rela~on to the provision of services." 
8. No action for infringeD1ent of unregistered trade 
tnark.-Section 6 of the principal Act is hereby aIYlended by 
omitting the words "as the goods", and substituting the words 
"or services as the goods or services". IP/NII/NZL/TI 1 
Page 62 
1987, No. 156 Trade Marks Amendment g 
4. Registration to be in respect of particular goods or 
services-The principal Act is hereby amended by repealing 
section 7, and substituting the following section: 
"7. A trade Illark IllUSt be regj.stered in respect of particular 
goods or services or classes of goods or services, and any 
question arising as to the class within which any goods or 
services fall sh311 be detennined by the Commissioner, whose 
decision shall be final." 
5. Right given by registration in Part A, and 
infringeDlent thereof--( 1) Section 8 of the principal Act is 
hereby amended by repealing subsection (1), and substituting 
the following subsections: 
"(1) Subject to the provisions of this section, and of sections 
11 and 12 of this Act, the registration (whether before or after 
the cOlllIllencem.ent of this Act) of a person in Part A of the 
register as proprietor of a trade m.ark (other than a certification 
. trade mark.) in respect of any goods or services shall, if valid, 
give or be deeIlled to have given to that person the ~xclusive 
righ~ to the use of the trade m.ark in relation to those goods or 
seIVlces. 
"(lA) Without limiting subsection (1) of this section, the right 
conferred by that subsection shall be deem.ed to be infringed by 
any person who, not being the proprietor of the trade mark or 
a registered user of it using by way of the permitted use, uses a 
Inark identical with it or so nearly resembling it as to be likely 
to deceive or cause confusion in the course of trade, in relation 
to any goods or services in respect of which it is registered, and 
in such m.anner as to render the use of the mark likely to be 
taken-
"(a) As being use as a trade m.ark; or 
"(b) In a case in which the use is use upon goods or in 
physical relation to goods or in an advertising 
circular or other advertisement issued to the public 
relating to ~oods, as im.porting a reference to some 
person havmg the right either as proprietor or as 
registered user to use the trade mark or to goods 
with which such a person is connected in the course 
of trade; or 
"(c) In a case in which the use is in relation to services or in 
an advertising circular or other advertisement issued 
to the public re~ating to services, as iInporting a 
reference to som.e person having the right either as 
proprietor or as registered user to use the trade 4 Trade Marks Amendment IP/N/I/NZL/T/l 
Page 63 
1987, No. 156 
mark or to services with which such a person is 
connected in the course of trade. " 
(2) Section 8 (2) of tile principal Act is hereby amended by 
inserting, after the words "any market", the words "in relation 
to services to be provided". . 
6. Right given by registration in Part B, and 
infringelIlent thereof-( 1) Section 9 (1) of the princip,al Act is 
hereby amended by inserting, after the word "goods ' in each 
place where it occurs, the words "or services". 
(2) Section 9 (2) of the Rrincipal Act is hereby amended by 
inserting, after the word 'goods", the words "or services". 
7. Saving for vested rights-Section 11 of the principal Act 
is hereby amended by inserting, after the word "goods" in each 
place where it occurs, the words "or services". 
8. Saving for use of n3.lIle, address, or description of 
goods or services-( 1) The principal Act is hereby amended 
by repealing section 12 (as amended by section 2 of the Trade 
Marks Amendment Act 1985), and substituting the following 
section: 
"12. No registration of a trade mark shall interfere with­
~'(a) Any bona fide use by a person of that person's own 
name or of the name of that person's place of 
business, or of the naIlle, or of the name of the place 
of business, of any of that person's predecessors in 
business; or 
"(b) The use by any person of any bona fide description of 
the character or quality of that person's goods or 
services, not being a description that would be likely 
to be taken as iInporting any such reference as is 
mentioned in paragraph (b) or paragraph (c) of 
subsection (lA) of section 8 of this Act or paragraph 
(b) or paragraph (c) of subsection (3A) of section 47 
of this Act." 
(2) The Trade Marks Amendment Act 1985 is hereby 
consequentially repealed. 
9. Distinctiveness requisite for registration iri Part A­
(1) Section 14 (1) (d) of the princir,al Act is hereby amended by 
inserting, after the word "goods " the words "or services". 
(2) Section 14 (2) of the principal Act is hereby amended by 
inserting, after the word "goods' in each place where it occurs, 
the words "or services". IP 1Nl I/NZL/T 11 
Page 64 
1987, No. 156 Trade Marks Amendment 5 
10. Capability of distinguishing requIsIte for 
registration in Part B-Section 15 (1) of the principal Act is 
hereby amended by inserting, after the word "goods" in each 
place where it occurs, the words "or services". 
11. Prohibition of registration of identical and 
resetnbling trade tnarks-The principal Act is hereby 
amended by repealing section 1 7 , and substituting the 
following section: 
"17. (1) Subject to subsection (3) of tIlls section, no trade 
mark shall be registered in respect of any goods if it is identical 
to a trade mark belonging to a different proprietor and already 
on the register in respect of the same goods, goods of the same 
description or services that are closely related to such goods, or 
that so nearly resembles such a trade mark as to be likely to 
deceive or cause confusion. 
"(2) Subject to subsection (3) of this section, no trade mark 
shall be registered in respect of any seIVices if it is identical to a 
trade mark belonging to a different proprietor and already on 
the register in respect of the same services, services of the same 
description or goods that are closely related to such services, or 
that so nearly resembles such a trade mark as to be likely to 
deceive or cause confusion. 
"(3) In case of honest concurrent use, or of other special 
circumstances which in the opinion of the Court or the 
Commissioner make it proper so to do, the Court or the 
Commissioner may pennit the registration of trade marks that 
are identical or nearly resemble each other as aforesaid by 
more than one proprietor subject to such conditions and 
liIllitations, if any, as the Court or the Commissioner, as the 
case may be, may think it right to impose. . 
"(4) Where separate applications are made by different 
persons to be registered as proprietors respectively of trade 
marks that are identical or nearly resemble each other as 
aforesaid the Commissioner may refuse to register any of them 
until their rights have been detennined by the Court, or have 
been settled by agreement in a manner approved by the 
Commissioner or on an appeal to the Court." 
12. Marks in respect of a class or large variety of goods 
or services-The principal Act is hereby amended by 
repealing section 20, an.d substituting the following section: 
"20. In the case of an application for registration in respect 
of all the goods or services included in a class or of a large 6 Trade MarJu Amendment IP/NIlINZL/TIl 
Page 65 
1987, No. 156 
variety of goods or services, the Commissioner may refuse to 
accept the application wiless the Commissioner is satisfied that 
the specification is justified by the use of the mark that the 
~pplicant has made, or intends to make if and when it is 
registered. " 
IS. Words used as nanle or description of article, 
substance, or service-The principal Act is hereby amended 
by repealing section 24, and substituting the follOWIng section: 
"24. (1) The registration of a trade mark shall not be deemed 
to have become invalid br reason only of any use, after the 
date of the registration, of a word or words which the trade 
mark contains, or of which it consists, as the name or 
description of an article, substance or service: 
"Provided that, if it is proved either-
"(a) That there is a well known and established use of the 
word or words as the name or description of the 
article, substance or service by a person or persons 
carrying on a trade therein, not being use in relation 
to goods or services connected in the course of trade 
with th~ proprietor or a registered user of the trade 
mark or (in the case of a certification trade mark) 
goods or services certified by the proprietor; or 
·"(b) That the article or substance was formerly manufactured 
under a patent or the service was formerly a 
patented process, that a period of 2 years or more 
after the cessor of the patent has elapsed, and that 
the word or words is or are the only practicable 
na~e or description of the article, substance or 
servlce,-
the provisions of subsection (2) of tIllS section shall have effect. 
"(2) Where the facts mentioned in paragraph (a) or 
paragraph (b) of the proviso to subsection (1) of this section are 
proved with respect to any word or words, then-
"(a) If the trade mark consists solely of that word or those 
words, the registration of the trade mark, so far as 
regards registration in respect of the article or 
substance in question or of any goods of the same 
description or of the services or of any services of 
the same description, as the case may be, shall be 
deemed for the purposes of section 41 of this Act to 
be an entry wrongly remaining on the register; and 
"(b) If the trade mark contains that word or those words and 
other ITlatter, the Court or the Commissioner, in IP/N/I/NZL/T/l 
Page 66 
1987, No. 156 Trade Marks Amendment 7 
deciding whether the trade mark shall remain on 
the register, so far as regards registration in respect 
of the article or substance in question and of any 
goods of the same description or of the services or of 
any services of the same description, as the case 
may be, may, in the case of a decision in favour of 
its remaining on the register, require as a condition 
thereof that the proprietor shall disclaim any right 
to the exclusive use in relation to that article or 
substance and any goods of the same description or 
to the service or to any services of the same 
description, as the case may be, of that word or 
those words, so, however, that no disclaimer on the 
register shall affect any rights of the proprietor of a 
trade mark except such as arise out of the 
registration of the trade mark in respect of which 
the disclaimer is made; and 
"(c) For the purposes of any other legal proceedings relating 
to the trade rnark,-
"(i) If the trade mark consists solely of that word 
or those words, all rights of the proprietor, whether 
under the common law or by registration, to the 
exclusive use of the trade mark in relation to the 
article or substance in question or to any goods of 
the same description or to the services or to any 
services of the SaIlle description, as the case may be; 
or 
"(ii) If the trade mark contains that word or those 
words and other matter, all such rights of the 
proprietor to the exclusive use of that word or those 
words in such relation as aforesaid,-
shall be deemed to have ceased on the date at which 
the use mentioned in paragraph (a) of the proviso to 
subsection (1) of this section first becaIIle well known 
and established, or at the expiration of the period of 
2 years mentioned in paragraph (b) of that proviso. 
"(3) No word that is the commonly used and accepted name 
of any single chemical element or single chemical compound, 
as distinguished from a mixture, shall be registered as a trade 
mark in respect of a chernical substance or preparation, and 
any such registration in force at the conunencernent of this Act 
or thereafter shall, notwithstanding anything in section 22 of 
this Act, be deemed for the purposes of section 41 of this Act to 
be an entry made in the register without sufficient cause, or an 8 Trade .\1 arks Amendment IP IN 11 INZL/T 11 
Page 67 
1987. No. 156 
entry wr0!lgly remaining on the register, as the circumstances 
ITIay requIre: 
"Provided that the foregoing provisions of this subsection 
shall not have effect in relation to a word that is used to denote 
only a brand or make of the element or compound as made by 
the proprietor or a registered user of the trade mark, as 
distitlguished from the element or cornpound as made by 
others, and in association with a suitable name or description 
open to the public use." 
14. Registration of part~ of trade tnarks and of trade 
lIlarks as a series-Section 30 (2) of the principal Act is 
hereby amended-
(a) By inserting, after the words "description of goods", the 
words "or the same services or description of services, 
as the case rnay be": 
(b) By. inserting in paragrar,h (a), after the word "goods", the 
words "or services '. 
15. Powers of, and restrictions OD, assignlTlent and 
transtnission-( 1) Section 31 (2) of the J?rincipal Act is hereby 
amended by inserting, after the word 'goods" in each place 
where it occurs, the words "or services". 
(2) Section 31 (3) of the principal Act is h~reby amended by 
inserting, after the word "goods' in each place where it occurs, 
the words ,"or services". 
(3) Section 31 of the principal Act is hereby amended by 
repealing subsection (4) (including the proviso thereto), and 
substituting the following subsections: 
"(4) Notwithstanding anything in the foregoing provisions of 
. this section, a trade mark shall not be, or be deemed to have 
been, assignable or transmissible in a case in which as a result 
of an assignment or transmission there would in the 
circumstances subsist or have subsisted, whether under the 
common law or by registration,-
"(a) In the case of a trade mark relating to goods, exclusive 
rights in more than one of the persons concerned to 
the use in relation to the same goods, goods of the 
same description or services that are closely related 
to such goods, of trade marks nearly resembling 
each other, or of identical trade marks, if having 
regard to the similarity of the goods and services 
and of the trade mark, the use ot the trade marks in 
exercise of those rights would be, or have been, 
likely to deceive or cause confusion: IP/N/I/NZL/T/l 
Page 68 
1987, No. 156 Trade Marks Amendment 9 
"(b) In the case of a trade mark relating to services, exclusive 
rights in more than one of the persons concerned to 
the use in relation to the same services, services of 
the same description or goods that are closely 
related to such services, of trade marks nearly 
resembling each other, or of identical trade marks, if 
having regard to the similarity of the goods and 
services and of the trade mark, the use of the trade 
marks in the exercise of those rights would be, or 
have been, likely to deceive or cause confusion. 
"(4A) Where a trade mark is, or has been, assigned or 
transmitted in such a case as aforesaid, the assignment or 
transmission shall not be deemed to be, or to have been, invalid 
under subsection· (4) of this section if the exclusive rights 
subsisting as a result thereof in the persons concerned 
respectively are, or were, having regard to limitations imposed 
thereon, such as not to be exercisable by 2 or more of those 
persons in relation to goods to be sold, or otherwise traded in, 
within New Zealand (otherwise than for export therefrom) or in 
relation to goods to be exported to the same market outside 
New Zealand or in relation to services to be provided in New 
Zealand. " 
(4) Section 3 1 (5) of the principal Act is hereby amended by 
inserting, after the word "goods' in each place where it occurs, 
the words "or services". 
(5) Section 3 1 of the principal Act is hereby amended by 
repealing subsection (6) (including the proviso thereto), and 
substituting the following subsections: 
"(6) Notwithstanding anything in subsections (1) to (3) of this 
section, a trade mark shall not, after the 1st day of January 
1940, be or have been assignable or transmissible in a case in 
which as a result of an assignment or transmission thereof, 
there would in the circumstances subsist or have subsisted, 
whether under the COIIlIllon law or by registration,-
. "(a) In the case of a trade mark relating to goods, an 
exclusive right in one of the persons concerned to 
the use of the trade mark limited to use in relation 
to goods to be sold or otheIWise traded in, in a place 
or places in New Zealand, and an exclusive right in 
another of those persons to the use of a trade mark 
nearly resembling the first-mentioned trade mark or 
of an identical trade mark in relation to the same 
goods, goods of the same description or services that 
are c10sely related to such ,;oods lil'hited to use in 10 Trade Marks Amendment JP IN 11 INZL/TI 1 
Page 69 
1987, No. 156 
relation to goods to l:?e sold, or otherwise traded in, 
or services to be provided in another place or other 
places in New Zealand: . 
"(b) In the case of a trade mark relating to ~ervices, an 
exclusive right in one of the persons concerned to 
the use of the trade mark limited to use in relation 
to services to be provided in a place or places in New 
Zealand, and an exclusive right in another of those 
persons to the use of a trade mark nearly resembling 
the first-mentioned trade. mark or of an identical 
trade mark in relation to the same services, services 
of the same description or goods that are closely 
related to such services limited to use in relation to 
services to be lrovided or goods to be sold or 
otherwise trade in, in another place or other places 
in New Zealand. . 
"(6A) Notwithstanding subsection (6) of this section, on 
application in the prescribed manner by the proprietor of a 
trade mark who proposes to assign it, or of a person who claiIns 
that a trade mark has been transmitted to that person or to a 
predecessor in tide of that person after the 1st day of January 
1940, in any such case, the Corrunissioner, if the Corrunissioner 
is satisfied that in all the circumstances the use of the trade 
marks in exercise of the said rights would ~ot be contrary to 
the public interest, rnay approve the assignment or 
transmission, and an assignment or transmission so approved 
shall not be deemed to be, or to have been, invalid under that 
subsection or under subsection (4) of this section, so, however, 
that in the case of a registered trade mark this provision shall 
not have effect unless application for the registration under 
section 34 of this Act of the title of the person becoming 
entitled is made within 6 months from the date on which the 
approval is given or, in the case of a transmission, was rnade 
before that date." 
(6) Section 31 (7) of the principal Act is hereby amended by 
inserting, after the word "goods' in each place where it occurs, 
the words "or services". 
16. Certain trade ntark.s to be associated so as to be 
assignable and transntissible as a whole only-( 1) Section 
32 (2) of the principal Act is hereby aIIlended by omitting the 
words "description of goods", and substituting the words 
"goods of the same description or of services that are closely 
related to those goods". IP IN 11 INZL/T 11 
Page 70 
1987, No. 156 Trade Marks Amendment 11 
(2) Section 32 of the principal Act is hereby amended by 
inserting, after subsection (2) (as amended by subsection (I) of 
this section), the following subsection: 
"(2A) Where a trade Inark that is registered, or is the subject 
of an application for registration, in respect of any services is 
identical with another trade mark that 18 re~tered, or is the 
subject of an application for registration, in the name of the 
same proprietor in respect of the same services or services of 
the same description or of goods that are closely related to 
those services, or so nearly, resembles it as to be likely to 
deceive or cause confusion if used by a person other than the 
proprietor, the Conunissioner may at any tiIne require that the 
trade marks shall be entered on the register as associated trade 
marks." 
(3) Section 32 (5) of the ~rincieal Act is hereby axnended by 
inserting, after the word' goods " the words "or services". 
17. Registration of assigntnents and transDl.issions­
Section 34 (I) of the principal Act is hereby amended by 
inserting, after the word "goods", the words "or services". 
18. ReDl.oval froDl. register and ilDposition of 
lilDitations on ground of non-use-(I) SectIon 35 of the 
principal Act is hereby aIllended by repealing subsection (I), 
and substituting the following subsections: 
"( I) Subject to the provisions of section 36 of this Act, a 
registered trade mark may be taken off the register in respect 
of any of the goods or services in respect of which It is 
registered on application by any person aggrieved to the Court 
or, at the option of the applicant and subject to the provisions 
of section 67 of this Act, to the Corrurrissioner, on the ground 
either-
"(a) That the trade mark was registered withou~ any bona 
fide intention on the part of the applicant for 
registration that it should be used ~ relation to 
those goods or services by that applicant, and that 
there has in fact been no bona fide use of the trade 
mark in relation to those goods or. services by any 
proprietor thereof for the tiIne being up to the date 
one month before the date of the application; or 
"(b) That up to the date one month before the date of the 
application a continuous period of 5 years or longer 
elapsed during which the trade mark was a 
registered trade mark and during which there was . 
no hOIla fide llse thereof in relation to those goods 12 Trade Marks Amendment IP IN 11 INZL/T 11 
Page 71 
1987, No. 156 
or services by any proprietor thereof for the tiIne 
being. 
"(lA) Except where the applicant has been permitted under 
section 11 of this Act to register an identical or nearly 
resembling trade mark in respect of the goods or services to 
which the application relates or where the Court or the 
Commissioner is of the opinion that the applicant might 
properly be permitted to register such a trade mark, the Court 
or the Commissioner, as the case may be, may refuse an 
application made under subsection (I) of this section in relation 
to any goods or services, if there has been, before the relevant 
date or during the relevant period, as the case may be,-
"(a) Where the application relates to goods, bona fide use of 
the trade mark by any proprietor thereof for the 
time being in relation to goods or services in respect 
of which the trade mark is registered, being goods of 
the same description as those goods or services that 
are closely related to those goods: 
"(b) Where the application relates to services, bona fide use 
of the trade mark by any proprietor thereof for the 
time being in relation to goods or services in respect 
of which tbe trade mark is registered, being services 
of the same description as those services or goods 
that are closely related to those services." 
(2) Section 35 (2) of the principal Act is hereby amended by 
omitting the words "such use as last aforesaid", and 
substituting the words "use of the trade mark in relation to 
goods to be sold, or otherwise traded in, in that place 
(otherwise than for export from New Zealand), or in relation to 
goods to be exported to that market". 
(3) Section 35 of the principal Act is hereby amended by 
inserting, after subsection (2) (as amended by subsection (2) of 
this section), the following subsection: 
"(2A) Where in relation to any services in respect of which a 
trade mark is registered-
"(a) The matters referred to in paragraph (b). of subsection (1) 
of this section are sho~ so far as regards non-use of 
the trade mark in relation to services provided in a 
particular place in New Zealand; and 
"(b) A person has been permitted under section 11 of this Act 
to register an identical or nearly resembling trade 
mark in respect of those services under a 
registration extending to use in relation to services 
provided in that place Gr the Court or the IP/N/I/NZL/T/l 
Page 72 
1987, No. 156 Trade Marks Amendment 13 
Commissioner, as the case may be, is of opinion that 
a person might properly be permitted so to register 
such a trade mark,-
on application by that person to the Court or, at the option of 
the applicant and subject to the provisions of section 67 of this 
Act, to the Cornrnissioner, the Court or the Commissioner, as 
the case may be, may impose on the registration of the first­
mentioned trade rnark such limitations as the Court or the 
Commissioner thinks proper for securing that that registration 
shall cease to extend to use of the trade mark in relation to 
services provided in that place." 
(4) Section 35 (3) of the principal Act is hereby amended by 
inserting in paragraph (a), after the word "goods", the words 
"or services' . 
19. Defensive registration of well-known trade lDarks­
(1) Section 36 (1) of the principal Act is hereby amended by 
inserting, after the word "goods" in each place where it occurs, 
the words "or services". 
(2) Section 36 (2) of the principal Act is hereby amended by 
inserting, after the word "goods' in each place where it occurs, 
the words "or services". 
(3) Section 36 (3) of the principal Act is hereby amended by 
omitting the words "in respect of different goods", and 
substituting the words "not registrations in respect of tlie same 
goods or services". 
(4) Section 36 (4) of the principal Act is hereby amended by 
inserting, after the word "goods' in each place where it occurs, 
the words "or services". 
20. Registered users-( 1) Section 37 (1) of the principal Act 
is hereby amended by inserting, after the word "goods" in each 
place where it occurs, the words "or services". 
(2) Section 37 (4) of the principal Act is hereby amended-
(a) By inserting in paragrar,h (b), after the word "goods", the 
words "or services ': 
(b) By inserting in paragrar,h (c), after the word "goods", the 
words "or services '. 
(3) Section 37 (5) of the principal Act is hereby amended by 
inserting, after the word "goods' in each place where it occurs, 
the words "or services". 
(4) Section 37 (8) of the principal Act is hereby amended by 
!?sertin& in ,paragraph (a), after the word "goods", the words 
or serVIces . 14 Trade Marks Amendment IP/N/l INZL/TI 1 
Page 73 
1987, No. 156 
(5) Section 37 (10) of the principal Act is hereby am.ended by 
inserting, after the word "goods' , the words "or services". 
21. Proposed use of trade mark by corporation to be 
constituted, etc.-(I) Section 38 (1) of the principal Act is 
hereby amended-
(a) By insertin~, after the word "goods", the words "or 
services ': 
(b) By insertin~ in paragrar,h (a), after the word "goods", the 
words 'or services ': 
(c) By inserting in paragrar,h (b), after the word "goods", the 
words "or services '. 
(2) Section 38 (4) of the principal Act is hereby amended by 
inserting, after the word "goods' in each place where it occurs, 
the words "or services". 
22. Entries in register-Section 43 (1) of the principal Act 
is hereby amended by inserting in paragraph (c), after the word 
"goods' in each place where it occurs, the words "or services". 
28. Adaptation of entries in register to a.tJlended or 
substituted classification of goods or services-The 
principal Act is hereby 3.IYlended by repealing section 46, and 
substituting the following section: 
"46. (1) Subject to any regulations under this Act, the 
Commissioner may from time to time amend the register, 
whether by making or expunging or varying entries therein, so 
far as may be necessary for the purpose of adapting the 
designation therein of the goods, classes of goods, services, or 
classes of services in respect of which trade marks are 
registered to any amended or substituted classification that 
may be prescribed. 
"(2) The Commissioner shall not, in exercise of any power 
conferred on the Commissioner for the purpose aforesaid, 
make any ~enchnent of the reg!ster that would have the effect 
of addirig any goods, classes of goods, services or classes of 
services to those in respect of which a trade mark is registered 
(whether in one or more classes) immediately before the 
amendment is to be made, or of antedating the registration of a 
trade mark in respect of any goods or services: 
"Provided that this subsection shall not have effect in relation 
to goods as to which the Commissioner is satisfied that 
compliance with this subsection in relation thereto would 
involve undue complexity and that the addition or antedating, 
as the case may be, would not affect any substantial quantity of IP IN 11 INZL/T 11 
Page 74 
1987, No. 156 Trade Marks Amendment 15 
goods and would not substantially prejudice the rights of any 
person. 
"(3) A proposal for the amendment of the register for the 
ptnpose aforesaid shall be notified to. the registered proprietor 
of the trade mark affected, shall be subject to appeal by the 
registered proprietor to the Court, shall be advertised with any 
modifications, and may be opposed before the Commissioner 
by any person aggrieved on the ground that the proposed 
amendment contravenes the ~rovisions of subsection (2) of this 
. sectibn, and the decision or the Commissioner on any such 
opposition shall be subject to appeal to the Court." 
24. Certification trade Dlar~-(I) Section 47 of the 
principal Act is hereby amended by repealing subsection (1), 
and substituting the following subsections: 
"( 1) A mark adapted in relation to any goods to distinguish in 
the course of trade goods certified by any person in respect of 
origin, material, tnooe of tnanufacture, quality, accuracy, or 
other characteristic, frotn goods not so certified shall be 
registrable as a certification trade mark in Part A of the register 
in respect of those goods in the naIIle, as proprietor thereof, of 
that person. 
"(lA) A-mark shall not be registrable pursuant to subsection 
( I) of this section in the naIIle of a person who carries on a 
trade in goods of the kind certified. 
"(IB) A mark adapted in relation to any services to 
distinguish in the course of trade services certified by any 
person in respect of quality, accuracy, performance or other 
characteristic, from services not so certified shall be registrable 
as a certification trade mark in Part A of the register in respect 
of those services in the naIIle, as proprietor thereof, of that 
person. 
"( 1 c) A mark shall not be registrable pursuant to subsection 
(IB) of this section in the naIlle of a r,erson who carries on a 
trade in services of the kind certified. ' 
(2) Section 47 (2) of the principal Act is hereby amended­
(a) By insertinq in paragrar,h (a), after the word ugoods", the 
words 'or services ': 
(b) By insertin~ in paragrar,h (b), after th~ word "goods", the 
. words 'or services'. 
(3) Section 47 of the principal Act is hereby amended by 
repe~g subsection (3), and substituting the following 
subsectIOns: 16 Trade Marks Amendment IP/NII/NZL/TI 1 
Page 75 
1987, No. 156 
"(3) Subject to subsections (4) to (6) of this section, and 
sections 11 and 12 of this Act, the registration of a person as 
proprietor of a certification trade mark in respect of any goods 
or~ services shall, if valid, give to that person the exclusive right 
to t~e use of the trade mark in relation to those goods or 
servIces. 
"(3A) Without limiting subsection (3) of this section, the right 
conferred by that subsection shall be deemed to be infringed by 
any person who, not being the proprietor of the trade Illark or 
a person authorised by the proprietor under the regulations in 
that behalf using it in accordance therewith, uses a lllark 
identical with it or so nearly resembling it as to be likely to 
deceive or cause confusion in the course of trade, in relation to 
any goods or services in respect of which it is registered, and in 
such Illanner as to render the use of the mark likely to be 
taken-
"(a) As being use as a trade mark; or 
"(b) In a case in which the use is use upon goods or in 
physical relation to goods or in an advertising 
circular or other advertisement issued to the public 
relating to goods, as importing a reference to SOllle 
person having the right either as proprietor or by his 
authorisation under the relevant regulations to use 
the trade mark or to goods certified by the 
proprietor; or 
"(c) In a case in which the use is in relation to services or in 
an advertising circular or other advertiselllent issued 
to the public relating to services, as importing a 
reference to some person having the right either as 
proprietor or by the proprietor's authorisation under 
the relevant regulations to use the trade mark or to 
services certified by the proprietor." 
(4) Section 4 7 (4) of the principal Act is hereby amended by 
inserting, after the word' market", the words "in relation to 
services to be provided". 
25. Regulations in respect of certification trade 
tnarks-Section 48 of the principal Act is hereby aIllended by 
inserting, after the word "goods' in each place where it occurs, 
the words "or services". 
26. Applications for registration of certification trade 
tnarks-Section 49 (5) of the principal Act is hereby amended 
by inserting in paragraph (a), after the word "goods", the words 
"or services". IP IN 11 INZL/T 11 
Page 76 
1 98 7, No. 156 Trade M arks A mendme1lt 1 7 
27. Cancellation or variation of registration of 
certification trade Inark-Section 52 (1) of the principal Act 
is hereby amended by inserting in paragraph (a), after the word 
"goods' in each place where it occurs, the words "or services". 
28. No costs on appeal against refusal to certify goods 
or services-The principal Act is hereby amended by 
repealing section 53, and substituting the following section: 
"53. Notwithstanding anything in section 62 of this Act, the 
Corrunissioner shall not have any jurisdiction to award costs to 
or against any party on an appeal to the Commissioner against 
a refusal of the proprietor of a certification trade mark to 
certify goods or services or to authorise the use of the trade 
mark." 
29. False representation of trade Dlark as registered­
Section 7 1 (1) of the principal Act is hereby amended by 
!-?sertin& in ,paragraph (c), after the word "goods", the words 
or servIces . 
so. Change of fonn of trade connection not to be 
deell'led to cause deception-Section 7 8 of the principal Act 
is hereby am~nded by inserting, after the ~or~, "goods" in each 
place where It occurs, the words "or, servIces . -' 
SI.Jointly owned trade lIlarks-Section 79 (1) of the 
principal Act is hereby alllended by omitting from paragraph 
(a) the words "an article", and substituting the words Hgoods or . " servIces . 
S2. Regulations-Section 85 (2) of the principal Act is 
hereby amended by inserting in paragraph (b), after the word 
"goods", the words "or services". 
ss. All'lendll'lent to Fair Trading Act 1986-( 1) Section 
16 of the Fair Trading Act 1986 is hereby amended by 
repe~g subsection (1 ), and substituting the following 
subsectIon: 
"( 1) No person shall, in trade,­
"(a) Forge any trade mark; or 
"(b) Falsely apply to any goods any trade mark or mark so 
nearly resembling a trade mark as to be likely to 
mislead or deceive; or 18 Trade Marks Amendment IP/N/I/NZL/T/l 
Page 77 
1987, No. 156 
"(c) Falsely use in relation to the provision of services any 
trade mark or mark so nearly resembling a trade 
mark as to be likely to mislead or deceive." 
(2) Section 16 (3) of the Fair Trading Act 1986 is hereby 
amended by inserting' in the definition of the term 
"certification trade mark", after the word "goods", the words 
"or services". 
(3) Section 16 (3) of the Fair Trading Act 1986 is hereby 
further amended by omitting the definition of the tenn "trade 
mark", and substituting the following definition: 
"Trade mark"-
"(a) Means any trade mark within the meaning of 
the Trade Marks Act 1953; and 
"(b) Includes-
"(i) A certification trade mark; and 
"(ii) In the case of goods, any mark that is used 
upon or in connection with goods for the 
purpose of indicating that they are the 
gooas of the proprietor of the mark by 
virtue of manufacture, selection, 
certification, dealing with, or offering to 
supply; and 
"(ill) In the case of services, any mark that is used 
in connection with the provision of the 
services for the purposes of indicating that 
they are the services of the proprietor of 
the mark." 
This Act is administered in the Department of Justice. 
. WELLINGTON. NEW ZEALAND: 
Published under the authority of the New Zealand Government-1994 
583470/948 IP/N/1/NZL/T 11 
Page 78 
1990 
Title 
1. Short Title Trade Marks Amendment No. 70 
ANALYSIS 
2. Right given by registration in Part A 
and infringement thereof 
1990, No. 70 
An Act to atnend the Trade Marks Act 1953 
[1 August 1990 
BE IT ENACTED by the Parliament of New Zealand as follows: 
I. Short Title-This Act may be cited as the Trade Marks 
Amendment Act 1 990, and shall be read together with and 
deemed part of the Trade Marks Act 1953 (hereinafter referred 
to as the principal Act). 
2. Right given by registration in Part A and 
infringetnent thereof--Section 8 of the principal Act (as 
amended by section 5 of the Trade Marks Amendment Act 
1987) is hereby amended by inserting, after subsection (3), the 
following subsection: 
"(3A) For the purposes of subsection (3) (a) of this section, the 
proprietor or registered user of a trade mark is deemed to have 
consented to the use of that mark in relation to a medicine that 
is imported by the Crown pursuant to· section 32A of the 
Medicines Act 1981 if the use of that mark in relation to that 
medicine has been expressly or impliedly consented to, 
whether or not that consent is subject to restrictions, by a 
person with whom the proprietor or registered user has any 
arrangement, whether direct or indirect and whether legally 
enforceable or not, relating to the use of that mark by the 
proprietor or registered user." 
This Act is administered in the Ministry of Commerce. 
Public-70 WELLINGTON, NEW ZEALAND; Published under the authority ot the 
New Zealand Government-1990 
18549E-90!NS 
Price Code: I-A IP IN 11 INZL/T 11 
Page 79 
1994 Trade Marks Amendment No. 123 
ANALYSIS 
Title 
1. Short Title and commencement 
2. Interpretation 
3. Right given by registration in Part A. 
and infringement thereof 
4. Right given by registration in Part B. 
and infringement thereof 
5. Savings for vested rights 
6. Saving for use of name. address, or 
description of goods or services 
7. Distinctiveness requisite for registration 
in Part A 
8. Prohibition of registration of deceptive, 
etc., matter 
9. Prohibition of registration of identical 
and similar trade marks 
10. Power of Commissioner to refuse cer­
tain applications 
1 1. Consents required in certain cases 
12. Marks in respect of a class or large vari­
ety of goods or services 
13. Restraint on registration of representa­
tion of Royal Arms, etc., as part of 
trade mark 
14. Words used as name or description of 
article, substance, or service 
15. Powers of. and restrictions on, assign· 
ment and transmission 
16. Certain trade marks to be associated so 
as to be assign"able at1Q. transmissible 
as a whole only " 
1 7. Removal from register and imposition 
of limitations on ground of non-use 18. Defensive registration of well-known 
trade marks 
19. Certification trade marks 
20. Applications for registration of certifica­
tion trade marks 
21. New sections inserted 
Border Protection Measures 
54A. Definitions 
548. Notice may be given to Comp­
troller of Customs 
54c. Detennination whether sign is 
infringing sign 
54 D. Limitations on requirement to 
supply information 
54£'. Notice of determination 
54F. Detention of goods bearing 
infringing sign 
54G. Proceedings in respect of 
goods bearing infringing 
sign 
54H. Forfeiture of goods by 
consent 
541. Powers of Court 
54J. Inspection of goods 
54K. Delegation of powers, duties, 
and functions . 
54 L. Protection of perso!ls acting 
under "auth~rity of ~c~ '-
54M. ~egulations .. ". . ".', 
22. False representation of a trade mark as 
registered 
23. Transitional provisions 
1994, No. 123 
An Act to antend the Trade Marks Act 1958 
[9 December 1994 
BE IT ENACTED by the Parliament of New Zealand as follows: 
1. Short Title and cOlDlDenCentent-( 1) This Act IIlay be 
cited as the Trade Marks AITlendment Act 1994, and shall be 
read together with and deemed part of the Trade Marks Act 
1953 (hereinafter referred to as the principal Act). 
Public-l 23 Price Code: 2.J-CY 2 IP/N/1/NZL/T 11 
Page 80 
Trade Marks Amendment 1994, No. 123 
(2) This Act shall COIne into force on a date to be appointed 
by the Governor-General by Order in Council; and one or more 
orders may be Inade bringing different provisions into force on 
different dates. 
2. Interpretation-( 1) Section 2 (1) of the principal Act is 
hereby amended by repealing the definition of the term 
"mark". 
(2) Section 2 (1) of the principal Act is hereby further 
aInended by inserting, after the definition of the term 
"registered user", the following definition: 
"'Sign' includes a device, brand, heading, label, ticket, 
naIne, signature, word, letter, numeral, colour or any 
cOInbination thereof:". 
(3) Section 2 (1) of the principal Act (as amended by section 
2 (2) of the Trade Marks Amendment Act 1987) is hereby 
further amended by repealing the definition of the term "trade 
mark", and substituting the following definition: 
" 'Trade Inark' means, except in relation to a certification 
trade. mark, any sign or any combination of signs, 
capable of being represented graphically and capable 
of distinguishing the goods or services of one person 
froIn those of another person, and means, in relation 
to a certification trade Illark, a sign registered or 
deeIned to have been registered on an application 
under section 4 7 of this Act:". 
(4) Section 2 of the principal Act is hereby amended by 
repealing subsection (2) (as substituted by section 2 (3) of the 
Trade Marks Amendment Act 1987), and substituting the 
following subsections: 
"(2) In this Act,-
"(a) References to the use of a sign in relation to goods shall 
be construed as references to the use of the sign 
upon, or in physical or other relation to, goods: 
"(b) References to the use of a sign in relation to services 
shall be construed as references to the use of the 
sign in relation to the provision of services. 
"(3) References in this Act to the use of a trade mark by the 
proprietor shall be construed as including use by a person other 
than the proprietor if such use is authorised by and subject to 
the control of the proprietor." 
(5) Subsections (2) and (3) of section 2 of the Trade Marks 
AIllendIllent Act 1987 are hereby consequentially repealed. 1994, No. 123 Trade Marks Amendment IP IN 11 INZL/T 11 
Page 81 
3 
8. Right given by registration in Part A, and 
infringelIlent thereof--( 1) Section 8 of the principal Act is 
hereby amended by repealing subsection (lA) (as inserted by 
section 5 of the Trade Marks Amendment Act 1987), and 
substituting the following subsection: 
"( lA) Without limiting subsection (1) of this section, the right 
conferred by that subsection shall be deemed to be infringed by 
any person who, not being the proprietor of the trade mark or 
a registered user of it using by way of the permitted use, uses in 
the course of trade-
"(a) A sign identical with it in relation to any goods or 
services in respect of which the trade mark is 
registered; or 
"(b) A sign identical with it in relation to any goods or 
services that are similar to any goods or services in 
respect of which the trade mark is registered, if such 
use would be likely to deceive or cause confusion; or 
"(c) A sign similar to it in relation to any goods or services 
that are identical with or similar to any goods or 
services in respect of which the trade mark is 
registered, if such use would be likely to deceive or 
cause confusion,-
and in such manner as to render the use of the sign likely to be 
taken-
"(d) As being use as a trade mark; or 
"(e) In a case in which the use is use upon goods or in 
physical relation to goods or in an advertising 
circular or other advertisement issued to the public 
relating to goods, as importing a reference· to some 
person having the right either as proprietor or as 
registered user to use the trade mark or to goods 
with which such a person is connected in the course 
of trade; or 
"(f) In a case in which the use is in relation to services or in 
an advertising circular or other advertisement issued 
to the public relating to services, as importing a 
reference to some person having the right either as 
proprietor or as registered user to use the trade 
mark or to services with which such a person IS 
connected in the course of trade." 
(2) Section 8 (4) of the principal Act is hereby amended by 
om.ittin~ the words "nearly resemble", and substituting the 
words' similar to". IP IN 11 INZL/T 11 
Page 82 
4 Trade Marks Amendment 1994, No. 123 
4. Right given by registration in Part B, and 
infringetnent thereof--( 1) Section 9 of the principal Act is 
hereby amended by repealing subsection (2) (as amended by 
section 6 (2) of the Trade Marks Amendment Act 1987), and 
substituting the following subsection: 
"(2) In any action for infringement of the right to the use of a 
trade mark given by registration as aforesaid in Part B of the 
register, otherwise than by an act that is deemed to be an 
infringement by virtue of section 10 of this Act, no injunction 
or other relief shall be granted to the plaintiff if the defendant 
establishes to the satisfaction of the Court that the use of which 
the plaintiff complains is use-
"(a) Of a sign identical with the trade mark in relation to any 
goods or services similar (but, not identical) to any 
goods or services in respect of which the trade mark 
is registered; or 
"(b) Of a sign similar (but not identical) to the trade mark in 
relation to any goods or services in respect of which 
the trade mark is registered or in relation to similar 
"goods or services,-
and is not likely to deceive or cause confusion or to be taken as 
indicating a connection in the course of trade between the 
goods or services or similar goods or services and some person 
having the right either as proprietor or as registered user to use 
the trade mark." 
(2) Section 6 (2) of the Trade Marks Amendment Act 1987 is 
hereby consequentially repealed. 
5. Savings for vested rights-(I) The principal Act is 
hereby ~mended by repealing section 11 (as amended by 
section 7 of the Trade Marks Amendment Act 1987), and 
substituting the following section: 
"11. (1) Nothing in this Act shall entitle the proprietor or a 
registered user of a registered trade mark to interfere with or 
restrain the use by any person of a trade mark identical with or 
similar to it in relation to goods or services in relation to which 
that person or a predecessor in title of his or her had 
continuously used that trade mark from a date prior to-
"(a) The use of the first-mentioned trade mark in relation to 
those goods or services or similar goods or services 
by the proprietor or a predecessor in title of his or 
her; or 
"(b) The registration of the, first-mentioned trade mark in 
respect of those goods or services or similar goods or 1994, No. 123 Trade Marks Amendment IP/N/I/NZL/T/l 
Page 83 
5 
services in the name of the proprietor or a 
predecessor in title of his or her,-
whichever is the earlier, or to object (on such use being proved) 
to that person being put on the register for that identical or 
similar trade mark in respect of those goods or services or 
similar goods or services under section 1 7 (5) of this Act. 
"(2) Nothing in this Act shall entitle the proprietor or a 
registered user of a registered trade mark-
"(a) To interfere with or restrain the use by any person of a 
trade mark identical with or similar to it in relation 
to goods or services in relation to which that person 
or a predecessor in title of his or her had 
continuously used that trade mark from a date prior 
to the COIllmencement of the Trade Marks 
Amendment Act 1 994 if, before that date, the use of 
that trade lllark by that person did not infringe the 
right to the use of the first·mentioned trade mark 
given by the registration thereof; or 
"(b) To object (on such use being proved) to that person 
being put on the register for that identical or similar 
trade mark in respect of those goods or services or 
similar goods or services under section 1 7 (5) of this 
Act. " 
(2) Section 7 of the Trade Marks Amendment Act 1987 is 
hereby consequentially repealed. 
6. Saving for use of nante, address, or description of 
goods or services-Section 12 (b) of the principal Act (as 
substituted by section 8 of the Trade Marks Amendment Act 
1987) is hereby amended by omitting the words "paragraph (b) 
or paragraph (c)" in both places where they occur, and 
substituting, in each case, the words "paragraph (e) or 
paragraph (f)". 
7. Distinctiveness requisite for registration in Part A­
Section 14 (1) (e) of the r,rincipal Act is hereby amended by 
omitting the word "mark " and substituting the word "sign". 
8. Prohibition of registration of deceptive, etc., 
lDatter-Section 16 of the principal Act is hereby amended by 
adding, as subsection (2), the following subsection: 
"(2) Notwithstanding subsection (1) of this section, it shall be 
lawful to register a trade mark even if use of the trade mark is 
restricted or prohibited under the Smoke· free Environments 
Act 1990 or the Geographical Indications Act 1994." IP/N/I/NZL/T/l 
Page 84 
6 Trade Marks Amendment 1994, No. 123 
9. Prohibition of registration of identical and sintilar 
trade ntarks-( 1) The principal Act is hereby amended by 
repealing section 17 (as substituted by section 11 of the Trade 
Marks Amendment Act 1987), and substituting the following 
section: 
"1 7. (1) Subject to subsection (5) of this section, no trade 
mark shall be registered in respect of any goods if it is identical 
with or sinruar to a trade mark belonging to a different 
proprietor and already on the register in respect of-
, (a) The same goods; or 
"(b) Similar goods; or 
"(c) Services that are similar to such goods,-
if use of the first-mentioned trade mark is likely to deceive or 
cause confusion. 
"(2) Subject to subsection (5) of this section, no trade mark 
shall be registered in respect of any goods if the trade mark (or 
an essential element) is identical or similar to or a translation of 
a trade mark which is well-known in New Zealand (whether 
through advertising or otherwise)-
"(a) As respects those goods or any siInilar goods; or 
"(b) As respects any other goods if use of the first-mentioned 
trade mark would be taken as indicating a 
connection in the course of trade between those 
. other goods and the proprietor of the well-known 
trade mark, and would De likely to prejudice the 
interests of such proprietor,-
where use of the first-mentioned trade mark would be likely to 
deceive or cause confusion. 
"(3) Subject to subsection (5) of this section, no trade mark 
shall be registered in respect of any services if it is identical with 
or similar to a trade mark belonging to a different proprietor 
and already on the register in respect of-
"(a) The same services; or 
"(b) Similar services; or 
"(c) Goods that are similar to such services,-
if use of the first-mentioned trade mark is likely to deceive or 
cause confusion. 
"(4) Subject to subsection (5) of this section, no trade mark 
shall be registered in respect of any services if the trade mark 
(or an essential element) is identical or similar to or a 
translation of a trade Illark which is well-known in New Zealand 
(whether through advertising or otherwise)-
"(a) As respects those services or any similar services; or 
"(b) As respects any other services if use of the first­
mentioned trade mark would be taken as indicating 1994, No. 123 Trade Marks Amendment IP/N/l INZL/TI 1 
Page 85 
7 
a connection in the course of trade between those 
other services and the proprietor of the well-known 
trade mark, and would be likely to prejudice the 
interests of such proprietor,-
where use of the first-mentioned trade mark would be likely to 
deceive or cause confusion. 
"(5) In the case of honest concurrent use, or of other special 
circumstances which in the opinion of the Court or the 
Commissioner make it proper so to do, the Court or the 
Commissioner may permit the registration of trade marks that 
are identical or simifar to each other as aforesaid by Illore than 
one proprietor subject to such conditions and limitations, if any, 
as the Court or the ComInissioner, as the case may be, think it 
right to impose. 
"(6) Where separate applications are Illade by different 
persons to be registered as proprietors respectively of trade 
marks that are identical or simifar to each other as aforesaid 
the COIllmissioner may refuse to register any of them until 
their rights have been determined by the Court, or have been 
settled by agreement in a manner approved by the 
Commissioner or on an appeal to the Court." 
(2) Section 11 of the Trade Marks Amendment Act 1987 is 
hereby consequentially repealed. 
10. Power of Cotntn.issioner to refuse certain 
applications-Section 18 ( 1) of the principal Act is hereby 
aIllended by oInitting the word "Illark", and substituting the 
word "sign". 
11. Consents required in certain cases-Section 19 of the 
principal Act is hereby aIllended by omitting the word "mark" 
in each place where it appears, and substituting the word 
"sign". 
12. Marks in respect of a class or large variety of goods 
or services-Section 20 of the principal Act (as substituted by 
section 12 of the Trade Marks AIllendment Act 1987) is hereby 
amended by oInitting the word "mark", and substituting the 
word "sign". 
1 S. Restraint on registration of representation of Royal 
Anns, etc., as part of trade tnark-Section 21 (1) (D of the 
principal Act is Iiereby repealed by oInitting the word "mark" 
in each place where it appears, and substituting in each case 
the word "sign". 8 IP/NII/NZL/TI 1 
Page 86 
Trade Marks Amendment 1994, No. 123 
14. Words used as natne or description of article, 
substance, or service-Section 24 of the principal Act (as 
substituted by section 13 of the Trade Marks AInendrnent Act 
1987) is hereby aIllended by repealing subsection (2), and 
substituting the following subsection: 
"(2) Where the facts mentioned in paragraph (C\.l or 
paragraph (b) of the proviso to subsection (1) of this section are 
proved with respect to any word or words, then-
"(a) If the trade mark consists solely of that word or those 
words, the registration of the trade rnark, so far as 
regards registration in respect of the article or 
substance in question or of any similar goods or of 
the services or of any similar services, as the case 
may be, shall be deemed for the purposes of 
section 41 of this Act to be an entry wrongly 
remaining on the register; and 
"(b) If the trade mark contains that word or those words and 
other matter, the Court or the CoIl1Il1issioner, in 
deciding whether the trade mark shall remain on 
the register, so far as regards registration in respect 
of the article or substance in question and of any 
similar goods or of the services or of any similar 
services, as the case may be, may, in the case of a 
decision in favour of its remaining on the register, 
require as a condition thereof that the proprietor 
shall disclaiIn any right to the exclusive use in 
relation to that article or substance and any similar 
goods or to the service or to any similar services, as 
the case may be, of that word or those words, so, 
however, that no disclaiIner on the register shall 
affect any rights of the proprietor of a trade mark 
except such as arise out of the registration of the 
trade mark in respect of which the disclaiIner is 
made; and 
"(c) For the purposes of any other legal proceedings relating 
to the trade rnark,-
"(i) If the trade rnark consists solely of that word 
or those words, all rights of the proprietor, whether 
under the COIllIllon law or by registration, to the 
exclusive use of the trade mark in relation to the 
article or substance in question or to any similar 
goods or to the services or to any similar services, as 
the case may be; or 
"(ii) If the trade mark contains that word or those 
words and other matter, all such rights of the 1994, No. 123 Trade Marks Amendment IP/N/l/NZL/T/l 
Page 87 
9 
proprietor to the exclusive use of that word or those 
words in such relation as aforesaid,-
shall be deemed to have ceased on the date at which the use 
Illentioned in paragraph (a) of the proviso to subsection (1) of 
this section first became well known and established, or at the 
expiration of the period of 2 years mentioned in paragraph (b) 
of that proviso." 
15. Powers of, and restrictions on, assignlIlent and 
translllission-( 1) Section 3 1 of the principal Act is hereby 
aInended by repealing subsection (4) (as substi~uted by section 
15 (3) of the Trade Marks AIllendIllent· Act 1987), and 
substituting the following subsection: 
"(4) Notwithstanding anything in the foregoing provisions of 
this section, a trade mark shall not be, or be deemed to have 
been, assignable or transmissible in a case in which as a result 
of an assignment or transmission there would in the 
circumstances subsist or have subsisted, whether under the 
common law or by registration,-
"(a) In the· case of a trade mark relating to goods, exclusive 
rights in more than one of the persons concerned to 
the use in relation to the same or similar goods, or 
services that are sinlllar to such goods, of siInilar or 
identical trade marks, if having regard to the 
similarity of the goods and services and of the trade 
mark, the use of the trade marks in exercise of those 
rights would be, or have been, likely to deceive or 
cause confusion: 
"(b) In the case of a trade mark relating to services, exclusive 
rights in more than one of the persons concerned to 
the use in relation to the same or similar services, or 
goods that are similar to such s~rvic~s, of siInilar or 
identical trade marks, if having regard to the 
similarity of the goods and services and of the trade 
mark, the use of~ the trade marks in the exercise of 
those rights would be, or have been, likely to deceive 
or cause confusion." . 
(2) Section 31 of the principal Act is hereby further amended 
by repealing subsection (6) (as substituted by section 15 (5) of 
the Trade Marks Amendment Act 1987), and substituting the 
following subsection: 
"(6) Notwithstanding anything in subsections.(I) to (3) of this 
section, a trade mark shall not, after the 1st day of January 
1940, be or have been assignable or transmissible in a case in 
which as a result of an assignment or transmission thereof, IP/N/lINZL/T/l 
Page 88 
10 Trade Marks Amendment 1994, No. 123 
there would in the circumstances subsist or have subsisted, 
whether under the common law or by registration,-
"(a) In the case of a trade mark relating to goods, an 
exclusive right in one of the persons concerned to 
the use of the trade mark limited to use in relation 
to goods to be sold or otherwise traded in, in a place 
or places in New Zealand, and an exclusive right in 
another of those persons to the use of a trade mark 
similar to the first-mentioned trade mark or of an 
identical trade mark in relation to the same or 
similar goods, or services that are similar to such 
goods limited to use in relation to goods to be sold, 
or otherwise traded in, or services to be provided in 
another place or other places in New Zealand: 
"(b) In the case of a trade mark relating to services, an 
exclusive right in one of the persons concerned to 
the use of the trade mark limited to use in relation 
to services to be provided in a place or places in New 
Zealand, and an exclusive right in another of those 
persons to. the use of a trade mark similar to the 
first-mentioned trade mark or of an identical trade 
mark in relation to the same or similar services or 
goods that are similar to such services limited to use 
in relation to services to be provided or goods to be 
sold or otherwise traded in, in another place or 
other places in New Zealand." . 
(3) Subsections (3) and (5) of section 15 of the Trade Marks 
Anlendment Act 1987 are hereby consequentially repealed. 
16. Certain trade tnarks to be associated so as to be 
assignable and transtnissible as a whole only_· -(1) Section 
32 of the principal Act is hereby amended by repealing 
subsection (2) (as amended by section 16 (1) of the Trade Marks 
Anlendment Act 1987), and substituting the following 
subsection: 
"(2) Where a trade mark that is registered, or is the subject of 
an application for registration, in respect of any goods is 
identical with another trade mark that is registered, or is the 
subject of an application for registration, in the name of the 
same proprietor in respect of the same or similar goods or of 
services that are similar to those goods, or so similar to it as to 
be likely to deceive or cause confusion if used by a person other 
than the proprietor, the Commissioner may at any time require 
that the trade marks shall be entered on the register as 
associated trade marks." 1994, No. 123 Trade M,arks Amendment IP/N/I/NZL/T/l 
Page 89 
11 
(2) Section 32 of the principal Act is hereby further amended 
by repealing subsection (2A) (as inserted by section 16 (2) of the 
Trade Marks Amendment Act 1987), and substituting the 
following subsection: 
"(2A) Where a trade mark that is registered, or is the subject 
of an application for registration, in respect of any services is 
identical with another trade mark that is registered, or is the 
subject of an application for registration, in the name of the 
same proprietor in respect of the same or similar services or of 
goods that are similar to those services, or so similar to it as to 
be likely to deceive or cause confusion if used by a person other 
than the proprietor, the Commissioner may at any time require 
that the trade marks shall be entered on the register as 
associated trade marks." 
(3) Subsections (1) and (2) of section 16 of the Trade Marks 
Amendment Act 1987 are hereby consequentially repealed. 
17. Retnoval frotn register and itnPOsltlon of 
litnitations on ground of non-use-( 1) Section 35 of the 
principal Act is hereby amended by repealing subsections (1) 
and (lA) (as substituted by section 18 (1) of the Trade Marks 
Amendment Act 1987), and substituting the following 
subsections: 
"(1) Subject to the provisions of section 36 of this Act, a 
registered trade mark Illay be taken off the register in respect 
of any of the goods or services in respect of which it is 
registered on application by any person aggrieved to the Court 
or, at the option of the applicant and subject to the provisions 
of section 67 of this Act, to the Commissioner, on the ground 
that up to the date one month before the date of the 
application a continuous period of 5 years or longer elapsed 
during which the trade mark was a registered trade mark and 
during which there was no bona fide use thereof in relation to 
those goods or services by any proprietor thereof for the time 
being. 
"(lA) Except where the applicant has been permitted under 
section 1 7 of this Act to register an identical or similar trade 
mark in respect of the goods or services to which the 
application relates or where the Court or the ColIlIllissioner is 
of the opinion that the applicant might properly be permitted 
to register such a trade mark, the Court or the ColIlIllissioner, 
as the case may be, may refuse an application made under 
subsection (1) of this section in relation to any goods or services, 
if there has been, during the relevant period,-IP IN I lINZL/T 11 
Page 90 
12 Trade Marks Amendment 1994, No. 123 
"(a) Where the application relates to goods, bona fide use of 
the trade mark by any proprietor thereof for the 
tiIlle being in relation to goods or services in respect 
of which the trade mark is registered, being goods of 
the same description as those goods or services that 
are similar to those goods: 
"(b) Where the application relates to services, bona fide use 
of the trade Illark by any proprietor thereof for the 
time being in relation to goods or services in respect 
of which the trade mark is registered, being services 
of the same description as those services or goods 
that are siInilar to those services." 
(2) Section 35 (2) of the principal Act is hereby aIllended­
(a) By omitting from paragraph (a) the words "paragraph (b) 
of "; and 
(b) By omitting from laragraph (b) the words "nearly 
reseIllbling", an substituting the word "siInilar". 
(3) Section 35 (2A) of the principal Act (as inserted by 
section 18 (3) of the Trade Marks Amendment Act 1987) is 
hereby amended-
(a) By omitting from paragraph (a) the words "paragraph (b) 
of"; and 
(b) By omitting from laragraph (b) the words "nearly 
resembling", an substituting the word "siInilar". 
(4) Section 35 (3) of the principal Act is hereby aITIended by 
omitting the words "paragraph (b) of ". 
(5) Section 18 (1) of the Trade Marks Amendment Act 1987 is 
hereby consequentially repealed. 
18. Defensive registration of well-known trade Rlarks­
Section 36 (1) of the principal Act (as aITIended by section I 9 of 
the Trade Marks Amendment Act 1987) is hereby amended by 
omitting the words "consisting of an invented word or invented 
words". 
19. Certification trade tnarks-( I) Section 47 of the 
principal Act (as amended by section 24 of the Trade Marks 
ArnendInent Act 1987) is hereby amended by ornittin~ frOIn 
subsections (1), (lA), (IB), (le), (2), (4), and (5) the word' mark" 
in each place where it appears as a single word, and 
substituting the word "sign". 
(2) Section 47 of the principal Act is hereby further amended 
by repealing subsection (3A) (as substituted by section 24 (3) of 
the Trade Marks Amendment Act 1987), and substituting the 
following subsection: 1994, No. 123 Trade Marks Amendment IP/N/1/NZL/T/1 
Page 91 
13 
"(3A) Without limiting subsection (3) of this section, the right 
conferred by that subsection shall be deemed to be infringed by 
any person who, not being the proprietor of the trade mark or 
a person authorised by the proprietor under the regulations in 
that behalf using it in accordance therewith, uses in the course 
of trade-
"(a) A sign identical with it in relation to any goods or 
services in respect of which the trade mark IS 
registered; or 
"(b) A sign identical with it in relation to any goods or 
services that are similar to any goods or services in 
respect of which the trade mark is registered, if such 
use would be likely to deceive or cause confusion; or 
"(c) A sign similar to it in relation to any goods or services 
that are identical with or similar to any goods or 
services in respect of which the trade mark is 
registered, if such use would be likely to deceive or 
cause confusion,-
and in such manner as to render the use of the sign likely to be 
taken-
"(d) As being use as a trade mark; or 
"(e) In a case in which the use is use upon goods or in 
physical relation to goods or in an advertising 
circular or other advertisement issued to the public 
relating to goods, as importing a reference to some 
person having the right either as proprietor or by 
the proprietor's authorisation under the relevant 
regulations to use the trade Illark or to goods 
certified by the proprietor; or 
"(f) In a case in which the use is in relation to services or in 
an advertising circular or other advertisement issued 
to the public relating to services, as importing a 
reference to some person having the right either as 
proprietor or by the proprietor's authorisation under 
the relevant regulations to use the trade mark or to 
services certified by the proprietor." 
20. Applications for registration of certification trade 
D1arks-Section 49 of the principal Act is hereby amended by 
omitting the word "mark" in each place where it appears, and 
substituting in each case the word "sign". 
21. New sections inserted-The principal Act is hereby 
amended by inserting, after section 54, the following heading 
and sections: 14 IP/N/1/NZL/T 11 
Page 92 
Trade Marks Amendment 1994, No. 123 
"Border Protection Measures 
"54A. Definitions-In this section and in sections 54B to 
54M of this Act, unless the context otherwise requires,­
"'Claimant' means a person who gives a notice under 
section 54B of this Act: 
" 'Collector' has the same meaning as it has in section 2 of 
the Customs Act 1966: 
" 'Comptroller' has the same meaning as it has in section 2 
of the Customs Act 1966: 
" 'Control of Customs' has the same meaning as it has in 
section 16 of the Customs Act 1966: 
" 'Court' means the High Court: 
" 'Infringing sign' means a sign that is-
"(a) Identical with a trade mark in respect of which 
a notice has been given under section 54B (1) of this 
Act and is used on or in physical relation to goods 
that are identical with goods in respect of which the 
trade mark is registered; or 
"(b) Identical with such a trade mark and is used on 
or in physical relation to goods that are similar to 
goods in respect of which the trade mark is 
registered, where such use would be likely to deceive 
or cause confusion; or 
"(c) Similar to such a trade mark and is used on or 
in physical relation to goods that are identical with or 
similar to goods in respect of which the trade mark is 
registered, where such use would be likely to deceive 
or cause confusion: 
" 'Officer of Customs' has the same meaning as it has in 
section 2 of the Customs Act 1966. 
"54B. Notice ID ay be given to COlDptroller of 
CustOIDS-( 1) A person who is the proprietor of a registered 
trade mark may give a notice in writing to the Comptroller­
"(a) Claiming that he or she is the profrietor of a trade mark 
that is registered in respect 0 the goods specified in 
the notice; and 
"(b) Requesting the Comptroller to detain any goods, upon 
or in physical refation to which an infringing sign is 
used, that are or at any time come into the control 
of Customs. 
"(2) A notice under subsection (1) of this section shall-
"(a) Contain such particulars in support of the request as may 
be prescribed in regulations made under this Act; 
and 1994, No. 123 Trade Marks Amendment IP/N/1/NZL/T 11 
Page 93 
15 
"(b) Specify the period for which the notice is to be in force, 
which period shall be-
"(i) Not longer than 5 years from the date of the 
notice; or 
"(ii) If the registration of the trade mark to which 
the notice relates will expire within the period of 
5 years from the date of the notice, not longer than 
the period for which the current registration will 
last. 
"(3) The Comptroller shall, in relation to any notice given 
under subsection (1) of this section,-
"(a) Accept the notice if the claimant and the notice given by 
tbe claimant comply with the requirem.ents of this 
section and any regulations made under this Act: 
"(b) Decline the notice if the claimant or the notice given by 
the claimant does not comply with the requirements 
of this section and any regulations made under this 
Act,-
and shall, within a reasonable period of receiving the notice, 
advise the claimant whether the notice has been accepted or 
declined. 
"(4) A notice accepted under subsection (3) (a) of this section 
remains in force for the period specified in the notice unless­
"(a) It is revoked by the claimant by notice in writing; or 
"(b) The Court orders, in proceedings under section 54c of 
this Act, that the notice be discharged. 
"(5) Nothing in this section applies in relation to any 
infringing sign that has been applied to goods in an overseas 
country by or with the licence of the proprietor of the 
registered trade mark to which the infringing sign relates. 
"(6) Subject to any agreement subsisting between a 
registered user of a registered trade mark and the proprietor of 
that trade mark, a registered user shall be entitled to call upon 
the proprietor to give notice under subsection (1) of this section 
in relation to that trade mark and, if the proprietor refuses or 
neglects to do so within 2 months of being so called upon, the 
registered user may give notice under that subsection as if he or 
she were the proprietor. 
"54c. Detertnination whether sign is infringing sign­
(1) Where-
"(a) A notice that has been accepted under section 54B (3) (a) 
of this Act is in force; and . 
"(b) A Collector forms the opinion that any goods that have 
been imported and that are in the control of 16 IP IN 11 INZL/T 11 
Page 94 
Trade Marks Amendment 1994, No. 123 
Customs may be goods to which the notice 
relates,-
the Collector may conduct such investigation as he or she 
considers necessary in order to establish whether or not the 
goods appear to be goods to which the notice relates. 
"(2) Where the Collector conducts an investigation, he or she 
may, subject to section 540 of this Act, require-
"(a) The claimant; or 
"(b) Any other person appearing to the Collector to have an 
interest in the goods-
to supply such information as the Collector may specify for the 
purpose of the investigation within 10 working days of being 
required to do so. 
"(3) Whether or not the Collector conducts any investigation, 
he or she shall, within a reasonable period of forming an 
opinion under subsection ( 1 ) of this section, make a 
determination whether or not the goods appear to be goods to 
which the notice relates. 
"(4) Nothing in this section applies to any goods that have 
been imported for private and domestic use. 
"54D. Litnitations on requiretnent to supply 
infonnation-( 1) A Collector shall not require any person to 
supply any information under section 54c (2) of this Act unless 
the Collector believes that the information is reasonably 
necessary for the purposes of an investigation under section 
54c (1) of this Act. 
"(2) Every person who is required to supply information to a 
Collector under section 54c (2) of this Act shall have the same 
privileges in relation to the giving of the information as 
witnesses have in any court. 
"(3) Where any person refuses or fails to supply information 
required by a Collector under section 54c (2) of this Act, the 
Collector may, subject to subsection (2) of this section, take that 
refusal or failure into account in forming any opinion under 
section 54c (1) of this Act or in making any determination 
under section 54c (3) of this Act. 
"54E. Notice of detertnination-(l) A Collector who 
makes a detennination under section 54c (3) of this Act shall 
cause written notice of the determination to be served on­
"(a) The claimant; and 
"(b) Any other person appearing to the Collector to have an 
interest in the goods-
within such period as may reasonably be necessary to effect 
servIce. 1994, No. 123 Trade Marks Amendment IP/N/1/NZL/T 11 
Page 95 
17 
"(2) Every notice required to be served on the claimant or 
other person under subsection (1) of this section may be given 
to the claimant or other person by-
"(a) Personal delivery to the claimant or other person; or 
"(b) Posting it to the last known address of the claimant or 
other person, in which case, it shall be deemed to 
have been served on the claimant or other person at 
the time at which it would have been delivered in 
the ordinary course of post; and in proving 
posting-
"(i) It shall be sufficient to prove that the notice 
was properly addressed; and 
"(ii) It shall be presumed, in the absence of proof 
to the contrary, that the notice was posted on the 
day on which it was dated; or 
"(c) Sending it by facsimile to the last known facsimile 
number of the claimant or other person, in which 
case, it shall, in the absence of proof to the contrary, 
be deemed to have been served on the claimant or 
other person on the day after the day on which it 
was sent; and, in proving sending, it shall be 
sufficient to prove that a facsimile machine 
generated a record of the transmission of the notice 
to such facsimile number. 
"(3) The detention of any goods under section 54F of this Act 
is not rendered illegal by a failure to serve notice under 
subsection (1) of this section. 
"54F. Detention of goods bearing infringing sign­
( 1) Where a Collector has formed an opinion that any goods 
that have been imported and that are in the control of CustOIllS 
may be goods to which a notice accepted under section 
54s (3) (a) of this Act relates, those goods shall be detained in 
the custody of the Comptroller or any Collector or any officer 
of Customs until-
"(a) The Comptroller or any Collector is served with an order 
made in proceedings under section 54c (1) of this 
Act that the notice be discharged; or 
"(b) The Comptroller or any Collector is served with an order 
made in proceedings under section 54c (2) of this 
Act that the goods be released; or 
"(c) Any proceedings under section 54c (3) of this Act in 
respect of those goods (including any appeal) are 
determ.ined by a decision that the goods are not 
goods upon or in physical relation to which an 18 IP IN 11 INZL/T 11 
Page 96 
Trade Marks Amendment 1994, No. 123 
infringing sign is used that have been imported 
other than for private and domestic use; or 
"(d) Any proceedings under section 54c (3) of this Act in 
respect of those goods, including any appeal, are 
abandoned; or 
"(e) Ten working days have elapsed since notice was served 
under section 54E of this Act and neither the 
Cornptroller nor a Collector has been served with 
notice of proceedings brought under section 54c (3) 
of t~s Act by a person other than the importer or 
conslgnee;-
whereupon the goods shall, subject to subsection (3) of this 
section, be released to the person entitled to them. 
"(2) The Comptroller or any Collector may, in any particular 
case, extend the period referred to in subsection (1) (e) of this 
section to 20 working days if he or she considers it appropriate 
to do so in all the circumstances. 
"(3) The Comptroller or any Collector or any officer of 
Customs shall not release any goods under subsection (1) of this 
section unless- ' 
"(a) Any other legal requirements as to importation of the 
goods are satisfied; and 
"(b) Any requirements made pursuant to any regulations 
under this Act requiring the deposit of a security 
have been satisfied; and 
"(c) The release of the goods is not otherwise contrary to law. 
"54c. Proceedings in respect of goods bearing 
infringing sign-( 1) Any person may apply to the Court for 
an order that a notice accepted under section 54B (3) (a) of this 
Act be discharged, and the Court may make such an order 
accordingly. 
"(2) Any person may apply to the Court for an order that any 
goods detained under section 54F of this Act be released, and 
the Court may make such an order accordingly. 
"(3) Any person may apply to the Court for a decision 
whether or not any goods the subject of a determination made 
under section 54c (3) of this Act are goods upon or in physical 
relation to which an infringing sign is used that have been 
imported other than for private and domestic use, and the 
Court shall make such a decision accordingly. 
"(4) Notice of proceedings under subsection (3) of this section 
shall be served on the Comptroller or any Collector. 
"(5) In proceedings under subsection (3) of this section, the 
Court shall issue directions as to the service of notice on 1994, No. 123 Trade Marks Amendment IP/NIlINZL/TIl 
Page 97 
19 
persons having an interest in the goods that are the subject of 
the proceedings and any such person is entitled-
"(a) To appear in those proceedings, whether or not that 
person was served with notice under section 54E of 
this Act; and 
"(b) To appeal against any order made in those proceedings, 
whether or not that person appeared in the 
proceedings. 
"(6) No order made in proceedings under subsection (3) of 
this section shall take effect until the end of the period within 
which notice of an appeal may be given or, if before the end of 
that period notice of appeal is duly given, until the final 
determination or abandonIllent of the proceedings on the 
appeal. 
"54H. Forfeiture of goods by consent-Where any goods 
have been detained in the custody of the Comptroller or any 
Collector or any officer of Customs, the importer or consignee 
of the goods may, by notice in writing to the Comptroller or 
any Collector, consent to the goods being forfeited to the 
Crown and, on the giving of any such notice, the goods shall be 
forfeited to the Crown. 
"54!. Powers of Court-(l) Where, in proceedings under 
section 54c (3) of this Act, the Court decides that any goods the 
subject of a determination made under section 54c (3) of this 
section are goods upon or in physical relation to which an 
infringing sign is used, that have been imported other than for 
private and domestic use, the Court shall make an order that 
the goods be-
"(a) Forfeited to the Crown; or 
"(b) Destroyed; or 
"(c) Otherwise dealt with as the Court thinks fit. 
"(2) In considering what order should be made under 
subsection (1) of this section, the Court shall have regard to-
"(a) Whether other remedies available in proceedings for 
infringement of a registered trade mark would be 
adequate to compensate the claimant and to protect 
that person's interests; and 
"(b) The need to ensure that no goods upon or in physical 
relation to which an infringing sign is used are 
disposed of in a manner that would adversely affect 
the claimant. 
"(3) Where more than one person is interested in any goods, 
the Court may direct that the goods be sold, or otherwise dealt IP/N/l/NZL/T/l 
Page 98 
20 Trade Marks Amendment 1994, No. 123 
with, and the proceeds divided, and shall Illake any other order 
as it thinks fit. 
"(4) Where, in proceedings under section 54c (3) of this Act, 
the Court decides that any goods the subject of a deterrrrination 
Illade under section 54c (3) of this Act are not goods upon or in 
physical relation to which an infringing sign is used, that have 
been iInported other than for private and dOIllestic use, the 
Court Illay Illake an order that any person who is a party to the 
proceedings pay cOIllpensation in such aIllount as the Court 
thinks fit to the iIllporter, consignee, or the owner of goods. 
"54J. Inspection of goods-(l) The COIllptroller or a 
Collector or officer of CuStOIllS shall, in respect of any goods in 
his or her possession that are or Illay be the subject of-
"(a) A notice given under section 54B of this Act; or 
"(b) An investigation under section 54c of this Act; or 
"(c) Proceedings under section 54c of this Act,-
allow any person claiming to have an interest in­
"(d) The goods; or 
"(e) Any investigation under section 54c of this Act, or any 
proceedings under section 54c of this Act, in relation 
to the goods-
to inspect those goods. 
"(2) A person referred to in subsection (1) of this section 
Illay-
"(a) Inspect the goods during nOrIllal office hours; or 
"(b) With the approval of the COIllptroller or Collector or 
officer of CuStOIlls, reIllove the goods or a saIllple 
thereof to such place, for such period, and on such 
conditions as the COIllptroller or Collector or officer 
Illay specify, for the purpose of inspecting theIll. 
"(3) Any person who wishes to inspect any goods under this 
section shall give the COIllptroller or Collector or officer of 
CuStOIllS not less than 72 hours notice of his or her intention to 
inspect those goods. 
"54K. Delegation of powers, duties, and functions­
( 1) With the written consent of the Minister of CuStOIllS, the 
COIllptroller Illay froIll tiIlle to tiIlle, either generally or 
particularly, by writing under his or her hand, delegate to any 
officer of CUStOIllS all or any of the powers, duties, and 
functions conferred or iInposed on, the COIllptroller by or 
under this Act. 
"(2) With the written consent of the Comptroller, a Collector 
may from time to time, either generally or particularly, by 
writing under his or her hand, delegate to any officer of 1994, No. 123 Trade Marks Amendment IP/N/I/NZL/T/l 
Page 99 
21 
CustOIllS all or any of the powers, duties, and functions 
conferred or iIllposed on the Collector by or under this Act. 
"(3) No delegation under subsection (1) or subsection (2) of 
this section shall include the power to delegate under either of 
those subsections. 
"( 4) Subject to any general or special directions given or 
conditions iIllposed from time to time by the Minister of 
Customs or the Comptroller or a Collector, as the case may be, 
the officer to whom any powers are so delegated may exercise 
those powers in the same IDanner and with the same effect as if 
they had been conferred on hiID or her directly by this Act and 
not by delegation. 
"(5) Every officer of CUStOIDS purporting to act pursuant to 
any delegation under this section shall, in the absence of proof 
to the contrary, be presuIDed to be acting in accordance with 
the terms of the defegation. 
"(6) Any delegation under this section ~ay be IDade to any 
sEecified person or to the holder or holders for the time being 
of any specified office or class of offices. 
"(7) Every such delegation, whether by the Comptroller or a 
Collector, shall be revocable at will, and no such delegation 
shall prevent the exercise of any power by the Comptroller or a 
Collector. -
"(8) Any such delegation shall, until revoked, continue in 
force according to its tenor, notwithstanding the fact that the 
Comptroller or Collector by whom it was IDade has ceased to 
hold office, and shall continue to have effect as if made by the 
successor in office of the COIDptroller or Collector. 
Cf. 1983, No. 41, s. 3; 1966, No. 19, s. 9 ' 
"54L. Protection of persons acting under authority of 
Act-Neither the Crown nor the Comptroller nor any Collector 
nor any officer of CUStOIDS shall be liable for any loss or 
damage occasioned by anything done or omitted to be done or 
purporting to have been done in the exercise of any function or 
power under any of sections 54B to 54K of this Act or any 
regulations IDade under section 54M of this Act for the purposes 
of those sections, unless the Comptroller or any Collector or 
any officer of Customs has not acted in good faith. 
Cf. 1966, No. 19, s. 228A 
"54M. Regulations-The Governor-General may from tiIne 
to time, by Order in Council, make regulations for all or any of 
the following purposes: 
"(a) Prescribing the form in which notices are to be given for 
the purposes of section 54B of this Act: 22 IP/N/l/NZL/T/l 
Page 100 
Trade Marks Amendment 1994, No. 123 
"(b) Prescribing the particulars to be contained in a notice 
given under section 54B of this Act: 
"(c) Requiring a person giving a notice under section 54B of 
this Act, either at the time of giving the notice or 
subsequently, to furnish evidence in support of the 
claim that goods are goods upon or in physical 
relation to which an infringing sign is used: 
"(cl) Requiring-
"(i) A person giving a notice under section 548 of 
this Act, either at the time of giving the notice or 
subsequently; or 
"(ii) A person to whom goods are to be or have 
been released from detention under section 54F (1) 
of this Act-
to give security or an indemnity, or both, to such 
persons, of such amount, and on such terms and 
cohditions as may be determined by the 
COlllptroller: 
"(e) Providing for exceptions to any requirement to give 
security or an indemnity imposed by any regulations 
lllade under paragraph (cl) of this section: 
"(f) Providing for the disposition of any security given under 
any regulations made under paragraph (d) of this 
section: 
"(g) Prescribing how goods that are forfeited to the Crown 
under section 54H or section 541 (1) (a) of this Act are 
to be disposed of: 
"(h) Providing for such other matters as are contelllplated by 
or necessary for giving effect to the provisions of 
sections 54B to 54L of this Act and for the due 
administration of those sections of this Act." 
22. False representation of a trade Dlark as registered­
Section 7 1 of the principal Act is hereby amended by olllitting 
the word "lllark" in each place where it appears as a single 
word, and substituting the word "sign". 
28. Transitional provisions-( 1) Nothing m this Act 
applies to or affects-
(a) Any proceedings for infringement of a registered trade 
lllark commenced before the commencement of this 
Act: 
(b) Any opposition to registration of a trade mark 
commenced before the commencement of this Act: 1994, No. 123 Trade Marks Amendment IP/NI1 INZL/TI 1 
Page 101 
23 
(c) Subject to subsection (2) of this section, any application for 
registration of a trade mark that is pending on the 
commencement of this Act: 
(d) Any application for rectification of an entry made in the 
register of trade marks, where such application was 
commenced before the commencement of this Act,­
and any such proceedings or opposition or application shall 
continue as if this Act had not been enacted. 
(2) Where, in respect of an application for registration of a 
trade mark, the application has not been advertised under 
section 27 of the principal Act before the commencement of 
this Act, the aPflication must be determined in accordance 
with the principa Act (as amended by this Act), if the applicant 
gives notice to the Commissioner of Trade Marks in accordance 
with subsection (3) of this section, requesting that the 
application be determined in accordance with the principal Act 
(as so amended). 
(3) Any notice under subsection (2) of this section­
(a) Must be in the prescribed form: 
(b) Must be accompanied by the prescribed fee: 
(c) Must be given on or before the date falling 6 months after 
the commencement of this Act, or on or before the 
date of acceptance of the trade mark, whichever 
occurs first. 
This Act is administered in the Ministry of Commerce. 
WELLINGTON, NEW ZEALAND: Published under the authority of the 
New Zealand Govenunent-1994 
59513A-94fNS 