Trade Marks Act 2002

Process for obtaining registration of trade mark and other matters - When registration of trade mark ceases - Revocation of registration of trade mark

66: Grounds for revoking registration of trade mark

You could also call this:

"Reasons why you might lose your trade mark"

You can lose the right to use your trade mark if certain things happen. Here are the reasons why:

If you don't use your trade mark for three years or more in New Zealand for the goods or services it's registered for, you might lose it. But if you couldn't use it because of something you couldn't control, that's okay.

If people start using your trade mark as a common name for your product or service because of things you did or didn't do, you might lose it.

If your trade mark is for something that used to be protected by a patent, and it's been more than two years since the patent ended, and there's no other good way to describe the thing, you might lose your trade mark.

If the way you use your trade mark might confuse or trick people about what your product or service is, where it comes from, or how good it is, you might lose it.

You can start using your trade mark again to keep it, but you need to do this before someone asks for it to be taken away. If you start using it just before someone asks for it to be taken away, it might not count unless you were already getting ready to use it again.

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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=DLM164640.


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65: Application for revocation of registration of trade mark, or

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67: Onus of proof for revocation of registration of trade mark for non-use, or

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Part 3Process for obtaining registration of trade mark and other matters
When registration of trade mark ceases: Revocation of registration of trade mark

66Grounds for revoking registration of trade mark

  1. The grounds for revoking the registration of a trade mark are as follows:

  2. that at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered:
      1. that, in consequence of acts or inactivity of the owner, the trade mark has become a common name in general public use for a product or service in respect of which it is registered:
        1. that—
          1. the article or substance was formerly manufactured under a patent or the service was formerly a patented process; and
            1. a period of 2 years or more has elapsed since the expiry of the patent; and
              1. the word is or the words are the only practicable name or description of the article, substance, or service:
              2. that, in consequence of the trade mark's use by the owner or with the owner's consent in relation to the goods or services in respect of which the trade mark is registered, the trade mark is likely to deceive or confuse the public, for instance as to the nature, quality, or geographical origin of those goods or services.
                1. For the purposes of subsection (1)(a), continuous period means a period that commences from a date after the actual date of registration and continues uninterrupted up to the date 1 month before the application for revocation.

                2. However, there are not grounds for revoking the registration of a trade mark for its non-use if its non-use is due to special circumstances that are outside the control of the owner of the trade mark.

                3. Subsection (1)(a) does not apply if the owner commences or resumes genuine use of the trade mark in the course of trade in New Zealand after the expiry of the 3-year period and before the application for revocation is made.

                4. Any commencement or resumption of use referred to in subsection (3) after the expiry of the 3-year period but within the period of 1 month before the making of the application for revocation must be disregarded unless preparation for the commencement or resumption began before the owner became aware that the application may be made.

                Notes
                • Section 66(1): amended, on , by section 130(1) of the Regulatory Systems (Economic Development) Amendment Act 2019 (2019 No 62).
                • Section 66(1)(a): replaced, on , by section 7(1) of the Trade Marks Amendment Act 2011 (2011 No 71).
                • Section 66(1)(b): repealed, on , by section 7(1) of the Trade Marks Amendment Act 2011 (2011 No 71).
                • Section 66(1A): inserted, on , by section 7(2) of the Trade Marks Amendment Act 2011 (2011 No 71).
                • Section 66(2): amended, on , by section 130(2) of the Regulatory Systems (Economic Development) Amendment Act 2019 (2019 No 62).
                • Section 66(3): replaced, on , by section 130(3) of the Regulatory Systems (Economic Development) Amendment Act 2019 (2019 No 62).