3.1.8 Section 186(1)(a) of the Trade Marks Act 2002

Section 186(1)(a) of the Trade Marks Act 2002 states:

Every person commits an offence who represents that -

(a) a sign, or the whole or a part of a trade mark, is a registered trade mark when it is not.

Where a person uses the ® symbol on a trade mark, that person represents that the trade mark is a registered trade mark.

Where an application has been filed in respect of a mark that contains the ® symbol, the examiner should raise concerns that the mark is not registrable under section 17(1)(b) of the Act, with reference to section 186(1)(a) of the Trade Marks Act 2002.

The applicant will overcome the examiner’s concerns by agreeing to delete the ® symbol from the mark. In some instances the applicant will be required to forward a new representation of the mark that does not contain the ® symbol. In other instances it may be possible for IPONZ to delete the ® symbol from the representation that was filed with the application.