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Trade Marks Act 2002
Legal proceedings
Civil proceedings for infringement
Acts not amounting to infringement
92: No infringement where trade mark used in circumstances not covered by registration

Part 1:
Preliminary

2Commencement 3Purposes 4Overview 5Interpretation 6Meaning of use of sign 7Meaning of use of trade mark 7ATransitional, savings, and related provisions 8Act binds the Crown

Part 2:
Registrability of trade marks

Preliminary

Absolute grounds for not registering trade mark

17Absolute grounds for not registering trade mark: general

Registrability of non-distinctive trade marks

18Non-distinctive trade mark not registrable 19Relevance of colour to distinctive character of trade mark 20Trade mark that contains geographical indication must not be registered in certain circumstances 21Trade mark that contains commonly used chemical names must not be registered

Relative grounds for not registering trade mark

Registrability of trade mark that contains certain words

22Registrability of trade mark that contains certain words

Registrability of trade mark that contains person's name

23Registrability of trade mark that contains person's name 24Registrability of trade mark that contains representations of Royal Family

Registrability of identical or similar trade marks

25Registrability of identical or similar trade mark 26Exceptions

Registrability of trade mark that contains flags

27Registrability of trade mark that contains representation of flag, etc, generally 28Registrability of trade mark that contains flag, State emblems, etc, of convention country 29Registrability of trade mark that contains armorial bearings, etc, of certain international organisations 30When emblems, etc, are protected under Paris Convention or TRIPS Agreement

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

Preliminary

31Classification of trade marks

Applications

General

32Application: how made 33Joint applications

Priority of applications

34Priority of applications for registration of identical or similar trade marks 35Commissioner's requirements in relation to applications without priority 36Priority of application to which convention country application relates

Amendment of application

37Withdrawal, etc, of application 38When Commissioner or court may amend application

Acceptance or rejection of application

39Examination of application 40Acceptance of application 41Applicant must be notified of non-complying application 42Revocation of acceptance of application 43Rejection of application 44Abandonment of application 45Applicant must be notified of grounds, etc, of conditional acceptance or rejection of application

Advertisement of accepted application

46Advertisement of accepted application

Opposition to application

47Opposition to accepted application 48Applicant's counter-statement 49Commissioner's determination on opposition

Registration of trade mark

50When trade mark must be registered 51Commissioner's requirements on registration 52Commissioner may dispense with production of probate or letters of administration in certain cases 53Replacement of certificate of registration

Additional matters that relate to certification trade marks

54When regulations that govern use of certification trade mark must be provided 55Consideration of application for registration of certification trade mark 56Approved regulations must be deposited at Intellectual Property Office of New Zealand

When registration of trade mark ceases

Duration of registration

57Duration of registration

Renewal of registration

58Renewal of registration 59Procedure for renewal of registration 60Effect of registered-past expiry date status 60AStatus of geographical indication removed from register for non-payment of renewal fee

Voluntary cancellation of registration of trade mark

61Voluntary cancellation of registration of trade mark

Mandatory cancellation or alteration of registration of trade mark

62Cancellation or alteration of registration of trade mark for breach of condition 63Cancellation or alteration of registration of certification trade mark 64Cancellation or alteration of registration of collective trade mark

Revocation of registration of trade mark

65Application for revocation of registration of trade mark 66Grounds for revoking registration of trade mark 67Onus of proof for revocation of registration of trade mark for non-use 68Revocation of registration of trade mark

Disclaimer of use of trade mark

69Voluntary disclaimer of trade mark by owner 70Disclaimer of trade mark as condition of not revoking its registration 71Disclaimer of trade mark for public interest reasons 72Rights affected by disclaimer

Invalidity of registration of trade marks

73Invalidity of registration of trade mark 74Effect of declaration of invalidity 75Presumption of validity of registration of trade mark

Rectification of register

76Rectification or correction of register

Other matters

Alteration in relation to registered trade mark

77Alteration of registered trade mark not permitted 78Alteration of register 78AAlteration of register concerning certain inconsistent information

Alteration of certification trade mark regulations

79Alteration of certification trade mark regulations 80Advertisement of application for alteration of regulations

Assignment or transmission

81Commissioner's certificate that relates to certain assignments or transmissions 82Registration of title to trade mark

Licensees

83Application for registration of licensee 84Registration of licensee 85Assigning or transmitting right to use trade mark 86Alteration of registration of licensee 87Cancellation of registration of licensee

Part 4:
Legal proceedings

Civil proceedings for infringement

How Act affects other rights

88How Act affects other rights

Acts amounting to infringement

89Infringement where identical or similar sign used in course of trade 90Infringement where non-compliance with certain contractual requirements 91No defence that infringement arose from use of company name

Acts not amounting to infringement

92No infringement where trade mark used in circumstances not covered by registration 93No infringement where more than 1 identical or similar registered trade marks used 94No infringement for comparative advertising of registered trade mark 95No infringement for honest practices 96No infringement for certain continuous use of unregistered trade mark 97No infringement for use in relation to certain identical or similar goods 97AExhaustion of rights conferred by registered trade mark 98When owner or licensee consents to use of registered trade mark 98ANo infringement through use of registered geographical indication

When infringement proceedings may be brought

99No proceedings for infringement of unregistered trade mark 100Time for bringing proceedings for infringement of registered trade mark

Who may apply for relief for infringement of registered trade mark

101Who may apply for relief for infringement of registered trade mark 102Licensee may request owner of registered trade mark to bring proceedings 103Consequences of owner of registered trade mark not bringing proceedings 104Consequences of licensee commencing proceedings

Unjustified proceedings

105Unjustified proceedings

Types of relief available for infringement

106Types of relief available for infringement of registered trade mark 107Damages for infringement of collective trade mark 108Order for erasure, etc, of offending sign

Orders for delivery up in civil proceedings

109Order for delivery up of infringing goods, infringing material, or infringing object 110Order for disposal of infringing goods, infringing material, or infringing object 111Matters to be considered by court 112Directions for service 113Rights of persons with interest in infringing goods, infringing material, or infringing object 114When order under section 110 takes effect 115Miscellaneous court order if more than 1 person interested in infringing goods, infringing material, or infringing object 116Position where no order made under section 110

Criminal proceedings

Preliminary

117When criminal proceedings may be commenced 118Application of Sentencing Act 2002 119Liability of officers of body corporate

Offences and penalties

120Offence to counterfeit registered trade mark 121Offence to falsely apply registered trade mark to goods or services 122Offence to make object for making copies of registered trade mark, etc 123Offence to possess object for making copies of registered trade mark, etc 124Offence to import or sell, etc, goods with falsely applied registered trade mark 125Penalties for offences

Orders for delivery up in criminal proceedings

126Order for delivery up in criminal proceedings 127When order for delivery up may be made 128Order for disposal of goods or other object ordered to be delivered up 129Matters to be considered by court 130Directions for service 131Rights of persons with interest in goods or other object 132When order under section 128 takes effect 133Miscellaneous court orders if more than 1 person interested in goods or other object 134Position where no order made under section 128

Enforcement officers

Appointment and functions of enforcement officers

134AChief executive may appoint enforcement officers 134BAuthority to act as enforcement officer 134CFunctions of enforcement officer

Enforcement officer's power of entry and examination without warrant

134DEnforcement officer’s power of entry and examination without warrant 134EWhat enforcement officer and person assisting may do when exercising power of entry and examination without warrant

Entry and search under search warrant

134FEnforcement officer or constable may apply for search warrant 134GApplication for search warrant 134HMode of application for search warrant 134IForm and content of search warrant 134JTransmission of search warrant 134KRetention of documents 134LWhen search warrant is executed 134MPowers of entry and search under warrant 134NPowers of persons called to assist

General provisions that apply to powers of entry and search, and entry and examination

134OApplication of sections 134P to 134S 134PPowers and duties of person exercising power of entry and search or power of entry and examination 134QInventory of things seized 134RCompliance with certain provisions may be deferred in certain circumstances 134SFurther extension to, or dispensation from, obligation to comply with certain provisions

Provisions relating to things seized

134TPeriod things seized may be retained 134UApplication for order to return things seized 134VDisposal of things seized 134WDisposal of perishable things

Other powers of enforcement officers

134XEnforcement officer may apply for production order 134YJudge may order documents to be produced 134ZPowers of enforcement officer to whom documents produced 134ZAOffence of failing to comply with order to produce documents

Powers of Police

134ZBPowers of Police

Miscellaneous

134ZCPrivilege against self-incrimination 134ZDOther privileges 134ZEDisclosure of information 134ZFNo liability if functions performed or powers exercised in good faith

Border protection measures

Interpretation

135Interpretation

Detention of goods suspected of bearing infringing sign

135ADetention of goods suspected of bearing infringing sign 135BRelease of goods

Notice of infringing sign

136Application of sections 137 to 141 137Notice may be given to chief executive 138Contents of notice 139Chief executive must accept or decline notice 139AChief executive may suspend accepted notice 139BNotice of suspension 139CChief executive may reinstate accepted notice 140Duration of accepted notice 141Licensee may require notice

Investigation where notice of infringing sign

142Application of sections 143 to 146 143Determination to conduct investigation 144Claimant to provide information for investigation 145Limitations on requirement to supply information

Chief executive's determination

146Chief executive's determination 147Notice of determination 148Consequences of failure to serve notice

Detention of goods bearing infringing sign

149Detention of goods bearing infringing sign 150When detained goods may be released 151Forfeiture of goods by consent

Proceedings relating to goods bearing infringing sign

152Application for various orders relating to goods bearing infringing sign 153Proceedings to determine whether goods bear infringing sign 154Powers of court

Inspection of goods that bear infringing sign

155Inspection of goods

Enforcement powers of Customs officers

155ACustoms officer may seize goods in control of Customs 155BChief executive may require person to produce documents concerning goods in control of Customs 155CChief executive may require person to appear and answer questions concerning goods in control of Customs 155DCustoms officer may apply for production order 155EJudge may order documents to be produced 155FPowers of Customs officer to whom documents produced 155GIssue of search warrants to Customs officers 155HPrivilege against self-incrimination 155IOther privileges 155JOffences

Immunity

155KNo liability if powers exercised in good faith

Delegation of chief executive's powers, duties, and functions

156Delegation of chief executive's powers, duties, and functions 157Protection of persons acting under authority of Act

Miscellaneous

Application to Commissioner or court?

158Application to Commissioner or court?

Appearance of Commissioner

159Commissioner's appearance in certain proceedings

Evidence

160Mode of giving evidence in proceedings before Commissioner 161Evidence of entries, documents, etc 162Registration is prima facie evidence of validity 163Appeal against decision of Commissioner that relates to assignments and transmissions 164Trade usage must be considered 165Certificate of validity

Costs

166Costs 167Commissioner or court may require security for costs 168No costs on appeal against refusal to certify or to authorise use 169Costs of Commissioner in proceedings before court

Appeals

170Appeals in relation to Commissioner's decisions 171Notice of appeal 172Hearing of appeal 173Determination of appeals 174Provisions pending determination of appeal

Part 5:
Administrative provisions and miscellaneous

Commissioner and Assistant Commissioners of Trade Marks

175Commissioner and Assistant Commissioners of Trade Marks 175AFunctions of Commissioner 175BPowers of Assistant Commissioners 175CPower of Commissioner to delegate 175DLiability of Commissioner and others 176Hearing before exercise of Commissioner's discretion

Advisory committee

177Advisory committee 178Function of advisory committee 179Membership of advisory committee 180Advisory committee may regulate own procedure

Register of trade marks

General

181Register of trade marks 182Contents of register 183No notices of trusts may be entered in register

Search of register

184Search of register

Offences relating to register

185Offence to make false entry in register 186Offences relating to false representation of trade mark

Miscellaneous

No compensation

187No compensation for diminution in rights attaching to trade mark

Intellectual Property Office of New Zealand

188Opening hours of Intellectual Property Office of New Zealand 189Closing of Intellectual Property Office of New Zealand at short notice

Personal representatives

190Recognition of agents 191Declarations, etc, on behalf of certain persons

Substitution

192Substitution of person other than applicant generally 193Substitution of person other than opponent on notice of opposition

Amendment of other documents

194Amendment of documents other than application

Fees

195Fees 195AUse of fees under this Act 195BValidation of fees used to recover costs of register of geographical indications

Service of notices

196Application of section 197 197Method of service of notices

Annual report

198Annual report by Commissioner of Patents

Regulation-making powers

199Regulations 199ARegulations: Madrid Protocol 200Orders in Council relating to convention countries

Amendments

201Acts amended

Transitional and savings provisions

202Repeal of Trade Marks Act 1953 203Transitional provision for certain applications and proceedings 204Transitional provision for notices given under section 54B of Trade Marks Act 1953 205Transitional provision for fees for defensive trade marks 206Certificate of validity of contested registration 207Orders in Council relating to convention countries under Trade Marks Act 1953 208Status of trade marks registered before commencement of Act 209Status of notes, etc, on register before commencement of Act

Schedule 1AA:
Transitional, savings, and related provisions

Schedule 1:
Acts amended

Trade Marks Act 2002

Legal proceedings - Civil proceedings for infringement - Acts not amounting to infringement

92: No infringement where trade mark used in circumstances not covered by registration

You could also call this:

"Using a trade mark in ways not included in its registration is okay"

You don't break the rules of a registered trade mark if you use a trade mark in a way that isn't covered by its registration. This means if there are special conditions listed for a trade mark in the official register, and you use the trade mark in a way that doesn't fall under those conditions, you're not doing anything wrong. It's like having permission to play in certain areas of a playground, but not others. If you play in an area that's not part of your allowed space, you're not breaking any rules because that area wasn't included in your permission in the first place.

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This page was last updated on 13 May 2025

View the original legislation for this page at https://legislation.govt.nz/act/public/1986/0120/latest/link.aspx?id=DLM164684.

Topics:

Business > Intellectual propertyMāori affairs > Te reo Māori

91: No defence that infringement arose from use of company name, or

"You can't avoid trouble by saying you used a trade mark as a company name"

93: No infringement where more than 1 identical or similar registered trade marks used, or

"Using a registered trade mark is okay, even if it looks like another registered one"

Part 4Legal proceedings
Civil proceedings for infringement: Acts not amounting to infringement

92No infringement where trade mark used in circumstances not covered by registration

A registered trade mark is not infringed by the use of a trade mark in any way or in any circumstances to which, having regard to any conditions entered on the register in relation to the trade mark, the registration does not extend.

Trade Marks Act 2002

Legal proceedings - Civil proceedings for infringement - Acts not amounting to infringement

92: No infringement where trade mark used in circumstances not covered by registration

"Using a trade mark in ways not included in its registration is okay"

Part 4Legal proceedingsCivil proceedings for infringement: Acts not amounting to infringement

92No infringement where trade mark used in circumstances not covered by registration

Part 4Legal proceedings
Civil proceedings for infringement: Acts not amounting to infringement