Trade Marks Act 2002

Legal proceedings - Civil proceedings for infringement - Acts amounting to infringement

89: Infringement where identical or similar sign used in course of trade

You could also call this:

"When you can't use signs that look like someone else's trade mark"

If you use a sign that is the same as or similar to someone else's registered trade mark, you might be breaking the law. This can happen in different ways:

You can't use a sign that's exactly the same as a registered trade mark for the same kinds of goods or services.

You also can't use a sign that's exactly the same as a registered trade mark for similar goods or services if it might trick or confuse people.

Using a sign that's similar to a registered trade mark for the same or similar goods or services is not allowed if it might trick or confuse people.

Even for different goods or services, you can't use a sign that's the same as or similar to a well-known trade mark in New Zealand if it takes unfair advantage of the trade mark or harms its special character or reputation.

These rules only apply if you're using the sign in a way that makes it look like you're using it as a trade mark.

There are some exceptions to these rules, which are explained in other parts of the law.

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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=DLM164679.


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"This law keeps other important rights the same"


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Part 4Legal proceedings
Civil proceedings for infringement: Acts amounting to infringement

89Infringement where identical or similar sign used in course of trade

  1. A person infringes a registered trade mark if the person does not have the right to use the registered trade mark and uses in the course of trade a sign—

  2. identical with the registered trade mark in relation to any goods or services in respect of which the trade mark is registered; or
    1. identical with the registered trade mark 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 that use would be likely to deceive or confuse; or
      1. similar to the registered trade mark 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 that use would be likely to deceive or confuse; or
        1. identical with or similar to the registered trade mark in relation to any goods or services that are not similar to the goods or services in respect of which the trade mark is registered where the trade mark is well known in New Zealand and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.
          1. Subsection (1) applies only if the sign is used in such a manner as to render the use of the sign as likely to be taken as being use as a trade mark.

          2. Sections 92 to 98 override this section.

          Notes
          • Section 89(1)(c): amended, on , by section 13 of the Trade Marks Amendment Act 2005 (2005 No 116).