3.1 Use that is contrary to New Zealand lawUp one level
Section 17(1)(b) prohibits the registration of a trade mark where the use of that trade mark is “contrary to New Zealand law”.
The use of a trade mark is “contrary to New Zealand law” where that use is in breach of a specific piece of New Zealand legislation.
Examiners should only raise concerns under this part of section 17(1)(b) of the Act where the use of the mark would result in a clear breach of an Act of Parliament.
When considering whether the use of a trade mark would be “contrary to New Zealand law”, examiners should consider:
- Whether the trade mark consists of or contains matter the use of which is prohibited by a particular piece of legislation.
The following pieces of legislation, for example, prohibit the use of certain types of matter:
- The Geneva Conventions Act 1958.
- The Flags, Emblems, and Names Protection 1981.
- Whether a court decision has issued in respect of the trade mark which establishes the illegality of its use under a particular piece of legislation.
For example, a court decision may have issued wherein the court found that the use of the mark contravenes the Fair Trading Act 1986.
Of the two possibilities listed above, examiners are most likely to raise concerns that the use of a mark would be “contrary to New Zealand law” where the mark consists of or contains matter whose use is prohibited by a particular piece of legislation.
- 3.1.2 The Geneva Conventions Act 1958
- 3.1.3 The Police Act 1958
- 3.1.4 The Commonwealth Games Symbol Protection Act 1974
- 3.1.5 The Flags, Emblems, and Names Protection Act 1981
- 3.1.6 The Plant Variety Rights Act 1987
- 3.1.7 The Racing Act 2003
- 3.1.8 Section 186(1)(a) of the Trade Marks Act 2002
- 3.1.9 Major Events Management Act 2007