Licensees

The owner of a registered trade mark may authorise other persons to use the trade mark.¹

A licensee is defined in the Act as:

“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”² 

The licensee may use the trade mark according to the terms of their license in relation to the goods or services for which the trade mark is registered and to which the license applies. This use is governed by the same conditions or limitations that apply to the trade mark registration.

The licensee may request that the owner of the registered trade mark take proceedings to prevent infringement of the mark.³ The licensee may then bring an action for the infringement of the trade mark if the registered owner neglects or refuses to do so within two months of a request from the licensee.⁴ If the licensee takes infringement action, the registered owner is made a defendant in the action but is not liable for costs if he or she does not take part in the proceedings.⁵

A registered trade mark is infringed if the registered owner or licensee has entered into a written contract with a purchaser or owner of goods that requires the purchaser or owner of the goods not to do, in relation to the goods, certain prohibited acts, and the owner of the goods then does any of the prohibited acts.⁶ These acts include:⁷

• Applying the trade mark on the goods after their condition, get-up, or packaging has been altered in any manner specified in the contract; or
• Altering the trade mark, removing or obliterating the trade mark in part, adding any other trade mark, or adding any written material that is likely to damage the reputation of the trade mark, if the trade mark is on the goods; or
• Removing or obliterating the trade mark, whether wholly or partly, if the trade mark is on the goods, and there is something else on the goods that indicates a connection in the course of trade between the owner or licensee and the goods.

The trade mark is not infringed if the owner of the goods:⁸

• Has not received notice of the contractual requirement; and
• Does not carry out or authorise, in the course of trade, or with a view to dealing with the goods in the course of trade, any of the prohibited acts; and
• Purchased the goods for value and in good faith before receiving notice of the contractual requirement or is a successor in title to an owner to whom this applies.

A trade mark registered in respect of goods is not infringed by its use in relation to identical or similar goods connected in the course of trade with the owner or licensee if, as to those goods, the owner or licensee has applied the trade mark and has not later removed or obliterated it, or has consented to the use.⁹

For these purposes, and only in relation to the use of a trade mark for medicine that is imported by the Crown under section 32A of the Medicines Act 1981, the owner or licensee is deemed to have consented to the use of a trade mark if a person with whom the owner or licensee has an arrangement that relates to the use of the trade mark by the owner or licensee has consented to its use.¹⁰ This only applies to the use of a trade mark in relation to a medicine that is imported by the Crown under the Medicines Act 1981.¹¹

Where a trade mark is registered in respect of goods, it is not infringed by use of the mark in relation to similar or identical goods which are adapted or intended to be provided in connection with other goods or services in relation to which the mark can be used without infringement. There will only be an exception to infringement if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted or intended, and the purpose or the effect of the use is to indicate only a connection in the course of trade between the owner and licensee and the goods.¹²

Similarly, a mark registered in respect of services is not infringed by use of the mark in relation to similar or identical goods which are intended to be provided in connection with goods or other services in relation to which the mark can be used without infringement. But only if the use of the mark is reasonably necessary in order to indicate that the services are intended to be so provided, and the purpose or the effect of the use is to indicate only a connection in the course of trade between the owner and licensee and the services.¹³

The licensee may require the owner of a registered trade mark to give notice under section 137 of the Act to the Chief Executive of the New Zealand Customs Service requesting the chief executive to detain any goods on or in physical relation to which an infringing sign is used that are, or at any time come into, the control of Customs. Where the registered owner neglects or refuses to give notice under section 137 within two months of a request from the licensee, the licensee may give notice as if he or she were the owner.¹⁴ Where the licensee has given notice under section 137, the licensee may also revoke such a notice.¹⁵
 

Footnotes

¹ See section 10(1)(b) of the Trade Marks Act 2002.

² See section 5 of the Trade Marks Act 2002.

³ See section 102 of the Trade Marks Act 2002

⁴ See section 103 of the Trade Marks Act 2002.

⁵ See section 104 of the Trade Marks Act 2002.

⁶ See section 90(1)(a) of the Trade Marks Act 2002

⁷ See section 90(2) of the Trade Marks Act 2002

⁸ See section 90(1)(b) of the Trade Marks Act 2002

⁹ See section 97(a) of the Trade Marks Act 2002

¹⁰ See section 98 (1) of the Trade Marks Act 2002

¹¹ See section 98 (2) of the Trade Marks Act 2002

¹² See section 97 (b) of the Trade Marks Act 2002

¹³ See section 97 (c) of the Trade Marks Act 2002

¹⁴ See section 141 of the Trade Marks Act 2002.

¹⁵ See section 140(a) of the Trade Marks Act 2002.