Trade Marks Act 2002

Preliminary

5: Interpretation

You could also call this:

"Explaining important words used in the trade mark law"

This law explains important terms used in the Trade Marks Act 2002. Here's what you need to know:

The Act covers rules about trade marks in New Zealand. It defines many key words and phrases, like:

  • A trade mark is a sign that can be shown visually and can tell different companies' products or services apart.

  • The owner of a trade mark is usually the person or company that registered it.

  • The register is the official list of all registered trade marks kept by the government.

  • A working day is any day that isn't a weekend or public holiday.

The law also explains other important concepts related to trade marks, like how to apply for one, what happens if the owner dies, and how trade marks from other countries are treated.

If you're dealing with trade marks in New Zealand, these definitions help make sure everyone understands the same meaning for important terms used in the law.

This text is automatically generated. It might be out of date or be missing some parts. Find out more about how we do this.

This page was last updated on

View the original legislation for this page at https://legislation.govt.nz/act/public/1986/0120/latest/link.aspx?id=DLM164249.


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4: Overview, or

"This law explains what trade marks are and how they work in New Zealand"


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6: Meaning of use of sign, or

"What counts as using a sign for goods or services"

Part 1Preliminary

5Interpretation

  1. In this Act, unless the context otherwise requires,—

    Act includes regulations made under this Act

      actual date of registration means the date entered on the register by the Commissioner under section 51(a)

        advisory committee means the advisory committee appointed under section 177

          applicant

          1. means a person who has applied for the registration of a trade mark; and
            1. includes the assignee of an application, if the assignment has been effected under section 82; and
              1. in sections 134G, 134H, and 134K, means the applicant for a search warrant; and
                1. in section 134U means the applicant for the order referred to in that section

                  application

                  1. means an application for the registration of a trade mark; and
                    1. includes an application for the registration of a series of trade marks

                      assignment means assignment by the acts of the parties concerned

                        certification trade mark means a sign capable of—

                        1. being represented graphically; and
                          1. distinguishing, in the course of trade,—
                            1. goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic from goods not so certified; or
                              1. services certified by any person in respect of quality, accuracy, performance, or other characteristic from services not so certified

                              chief executive,—

                              1. in subpart 3 of Part 4 (border protection measures), has the meaning set out in section 135; and
                                1. in the rest of this Act, means the chief executive of the Ministry

                                  claimant has the meaning set out in section 135

                                    collective association means a body (whether incorporated or not) that has or is able to have members, and is—

                                    1. constituted for the joint benefit of its members for the time being; and
                                      1. so constituted that its membership at any time can be ascertained

                                        collective trade mark means a sign capable of—

                                        1. being represented graphically; and
                                          1. distinguishing the goods or services of members of the collective association that is the owner of the sign from those of persons who are not members of the collective association

                                            Commissioner

                                            1. means the Commissioner of Trade Marks; and
                                              1. to avoid doubt, includes an Assistant Commissioner of Trade Marks

                                                condition includes a limitation of the exclusive right to use a trade mark given by the registration of the trade mark, including a limitation of that right as to—

                                                1. mode of use:
                                                  1. use in relation to goods to be sold or otherwise traded in any place within New Zealand:
                                                    1. use in relation to services to be provided within New Zealand:
                                                      1. use in relation to goods to be exported to any market outside New Zealand

                                                        control of the Customs has the meaning set out in section 135

                                                          convention country, in any provision of this Act, means an entity for the time being declared by an order under section 200 to be a convention country for the purposes of that provision

                                                            convention country application means an application for the registration of a trade mark that is made in a convention country (whether before or after it became a convention country) and that is, in accordance with the—

                                                            1. terms of a treaty between 2 or more convention countries, equivalent to an application made in any one of those convention countries; or
                                                              1. law of any convention country, equivalent to an application made in that convention country

                                                                court

                                                                1. means the High Court; and
                                                                  1. for the purposes of sections 126 to 134, and 134T to 134V, includes the District Court or a Judge of that court

                                                                    Customs officer has the meaning set out in section 135

                                                                      deceased owner

                                                                      1. means a registered owner of any trade mark who has died, whether before or after the commencement of this Act; and
                                                                        1. includes an applicant for the registration of a trade mark who has died before it is registered, whether before or after the commencement of this Act

                                                                          deemed date of registration means,—

                                                                          1. in the case of a trade mark to which section 36 applies, the date of the application in the convention country (subject to any enactment relating to international arrangements):
                                                                            1. in any other case, the date of the application

                                                                              document, for the purposes of subpart 2A of Part 4 and sections 155B and 155D to 155F, means—

                                                                              1. any material, whether or not it is signed or otherwise authenticated, that bears symbols (including words and figures), images, or sounds or from which symbols, images, or sounds can be derived, and includes—
                                                                                1. a label, marking, or other writing that identifies or describes a thing of which it forms a part, or to which it is attached:
                                                                                  1. a book, map, plan, graph, or drawing:
                                                                                    1. a photograph, film, or negative; and
                                                                                    2. information electronically recorded or stored, and information derived from that information

                                                                                      infringing goods, in relation to a registered trade mark, are goods that bear, or goods the packaging of which bears, a sign that is identical with or similar to the registered trade mark and—

                                                                                      1. the application of the sign to the goods or their packaging is an infringement of the registered trade mark; or
                                                                                        1. the sign has been used in relation to the goods or their packaging in a way that infringes the registered trade mark

                                                                                          infringing material, in relation to a registered trade mark, means material that bears a sign that is identical with or similar to the registered trade mark and either the sign is—

                                                                                          1. used for labelling or packaging goods, as a business paper, or for advertising goods or services, in a way that infringes the registered trade mark; or
                                                                                            1. intended to be used in a way that would infringe the registered trade mark

                                                                                              infringing object, in relation to a registered trade mark, means an object that is—

                                                                                              1. specifically designed or adapted for making copies of a sign that is identical or similar to the registered trade mark; and
                                                                                                1. in the possession, custody, or control of a person who knows or has reason to believe that the object has been or is to be used to produce infringing goods or material

                                                                                                  infringing sign has the meaning set out in section 135

                                                                                                    International Bureau means the International Bureau of the World Intellectual Property Organization

                                                                                                      licensee, in relation to a trade mark, means a person whose use of the trade mark is authorised by, and subject to the control of, the owner of the trade mark

                                                                                                        Madrid Protocol means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989, as amended from time to time

                                                                                                          member,—

                                                                                                          1. in relation to a collective association, means a member of the association; and
                                                                                                            1. in relation to a collective trade mark, means a member of the collective association that is the owner of the collective trade mark

                                                                                                              Ministry means the department of State that, with the authority of the Prime Minister, is responsible for the administration of this Act

                                                                                                                Nice Agreement means the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks adopted at Nice on 15 June 1957, as amended from time to time

                                                                                                                  Nice Classification means the classification of goods and services for the registration of marks published from time to time under the Nice Agreement

                                                                                                                    owner,—

                                                                                                                    1. in relation to a registered trade mark that is not a certification trade mark or a collective trade mark, means the person in whose name the trade mark is registered; and
                                                                                                                      1. in relation to a collective trade mark that is registered, means the collective association in whose name the trade mark is registered; and
                                                                                                                        1. in relation to a certification trade mark that is registered, means the person who certifies the goods or services to which the certification trade mark relates; and
                                                                                                                          1. in relation to an unregistered trade mark, means the person who owns all of the rights in the mark

                                                                                                                            Paris Convention means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time

                                                                                                                              protected international trade mark (New Zealand) means a trade mark that is entitled to protection in New Zealand under the Madrid Protocol

                                                                                                                                qualified person, in relation to a deceased owner, means a person who satisfies the Commissioner—

                                                                                                                                1. that he or she has obtained or is entitled to obtain probate of the will of the deceased owner or letters of administration in his or her estate in the place where the deceased owner was domiciled at his or her death, or that he or she is the legal representative of the deceased owner in that place:
                                                                                                                                  1. that probate of the will of the deceased owner or letters of administration in his or her estate have not been granted or resealed in New Zealand:
                                                                                                                                    1. that the interests of the creditors of the deceased owner, and of all persons beneficially interested under his or her will or on his or her intestacy, will be adequately safeguarded if the Commissioner registers the qualified person as the owner of the trade mark

                                                                                                                                      register means the register of trade marks kept under section 181

                                                                                                                                        registered geographical indication has the same meaning as in section 7(1) of the Geographical Indications Registration Act 2006

                                                                                                                                          registered trade mark means, subject to section 60, a trade mark that is on the register

                                                                                                                                            regulations means, except in sections 54 to 56, 63, 79, and 80, regulations in force under this Act

                                                                                                                                              series of trade marks means a number of trade marks for the same goods or description of goods or the same services or description of services (as the case may be) that—

                                                                                                                                              1. resemble each other in their material particulars; and
                                                                                                                                                1. differ only in respect of 1 or more of the following matters:
                                                                                                                                                  1. statements of the goods or services for which they are, or are proposed to be, used:
                                                                                                                                                    1. statements of number, price, quality, or names of places:
                                                                                                                                                      1. other matters of a non-distinctive character that do not substantially affect the identity of the trade marks:
                                                                                                                                                        1. colour

                                                                                                                                                        sign includes—

                                                                                                                                                        1. a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word; and
                                                                                                                                                          1. any combination of signs

                                                                                                                                                            specification means the goods or services specified on the application for the registration of the trade mark in relation to which the registered trade mark is to be used or is proposed to be used

                                                                                                                                                              trade mark

                                                                                                                                                              1. means any sign capable of—
                                                                                                                                                                1. being represented graphically; and
                                                                                                                                                                  1. distinguishing the goods or services of one person from those of another person; and
                                                                                                                                                                  2. includes,—
                                                                                                                                                                    1. except in section 85, a certification trade mark; and
                                                                                                                                                                      1. except in section 85, a collective trade mark

                                                                                                                                                                      transmission means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer that is not assignment

                                                                                                                                                                        TRIPS Agreement means the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement, as revised or amended from time to time

                                                                                                                                                                          working day means a day of the week other than—

                                                                                                                                                                          1. a Saturday, a Sunday, Waitangi Day, Good Friday, Easter Monday, Anzac Day, the Sovereign’s birthday, Te Rā Aro ki a Matariki/Matariki Observance Day, and Labour Day; and
                                                                                                                                                                            1. the day observed in the appropriate area as the anniversary of the province of which the area forms part; and
                                                                                                                                                                              1. a day in the period that commences with 25 December in any year and,—
                                                                                                                                                                                1. except in section 171, ends with 2 January in the following year; or
                                                                                                                                                                                  1. in section 171, ends with 15 January in the following year; and
                                                                                                                                                                                  2. if 1 January in any year falls on a Friday, the following Monday; and
                                                                                                                                                                                    1. if 1 January in any year falls on a Saturday or a Sunday, the following Monday and Tuesday; and
                                                                                                                                                                                      1. if Waitangi Day or Anzac Day falls on a Saturday or a Sunday, the following Monday

                                                                                                                                                                                        writing includes the—

                                                                                                                                                                                        1. recording of words in a permanent and legible form; and
                                                                                                                                                                                          1. recording of words by electronic means that can be retrieved and read; and
                                                                                                                                                                                            1. display of words by any form of electronic or other means of communication that is subsequently recorded by electronic means that can, by any means, be retrieved and read

                                                                                                                                                                                              WTO Agreement means the World Trade Organisation Agreement signed in Marrakesh in 1994, as revised or amended from time to time.

                                                                                                                                                                                              1. In the case of an entity that is a convention country but is not a State, part of a State, or a territory for whose international relations a State is responsible, a reference in this Act to an application for protection in a country must be read as a reference to an application for protection under the rules of the entity.

                                                                                                                                                                                              Notes
                                                                                                                                                                                              • Section 5(1) applicant paragraph (b): amended, on , by section 4(2) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) applicant paragraph (c): inserted, on , by section 4(3) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) applicant paragraph (d): inserted, on , by section 4(3) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) chief executive: replaced, on , by section 4(4) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) court: replaced, on , by section 4(5) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) court paragraph (b): amended, on , by section 261 of the District Court Act 2016 (2016 No 49).
                                                                                                                                                                                              • Section 5(1) document: inserted, on , by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) geographical indication: repealed, on , by section 63 of the Geographical Indications (Wine and Spirits) Registration Act 2006 (2006 No 60).
                                                                                                                                                                                              • Section 5(1) International Bureau: inserted, on , by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) licensee: replaced, on , by section 4(6) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) Madrid Protocol: inserted, on , by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) Ministry: inserted, on , by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) Nice Agreement: inserted, on , by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) Nice Classification: inserted, on , by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) owner paragraph (d): amended, on , by section 4(7) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) permitted use: repealed, on , by section 4(8) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) protected geographical indication: repealed, on , by section 63 of the Geographical Indications (Wine and Spirits) Registration Act 2006 (2006 No 60).
                                                                                                                                                                                              • Section 5(1) protected international trade mark (New Zealand): inserted, on , by section 4(1) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) registered geographical indication: inserted, on , by section 63 of the Geographical Indications (Wine and Spirits) Registration Act 2006 (2006 No 60).
                                                                                                                                                                                              • Section 5(1) registered geographical indication: amended, on , by section 87 of the European Union Free Trade Agreement Legislation Amendment Act 2024 (2024 No 10).
                                                                                                                                                                                              • Section 5(1) registered trade mark: amended, on , by section 123 of the Regulatory Systems (Economic Development) Amendment Act 2019 (2019 No 62).
                                                                                                                                                                                              • Section 5(1) series of trade marks: replaced, on , by section 4(9) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) specified goods: repealed, on , by section 63 of the Geographical Indications (Wine and Spirits) Registration Act 2006 (2006 No 60).
                                                                                                                                                                                              • Section 5(1) trade mark paragraph (b): replaced, on , by section 4(10) of the Trade Marks Amendment Act 2011 (2011 No 71).
                                                                                                                                                                                              • Section 5(1) working day paragraph (a): replaced, on , by wehenga 7 o Te Ture mō te Hararei Tūmatanui o te Kāhui o Matariki 2022/section 7 of the Te Kāhui o Matariki Public Holiday Act 2022 (2022 No 14).
                                                                                                                                                                                              • Section 5(1) working day paragraph (e): replaced, on , by section 8 of the Holidays (Full Recognition of Waitangi Day and ANZAC Day) Amendment Act 2013 (2013 No 19).
                                                                                                                                                                                              • Section 5(1) working day paragraph (f): inserted, on , by section 8 of the Holidays (Full Recognition of Waitangi Day and ANZAC Day) Amendment Act 2013 (2013 No 19).