2.3 Validity of the trade mark registration

An application for rectification may not be made in respect of a matter that affects the validity of the registration of the trade mark.¹³

Section 76(3) of the Act is equivalent to the proviso to rectification that is set out in section 64 of the UK Act. Section 64 of the UK Act states:

64. - (1) Any person having a sufficient interest may apply for the rectification of an error or omission in the register:

In Andreas Stihl [2001] RPC 12, the Appointed Person commented:

One of the “unwaivable statutory requirements” referred to in the Andreas Stihl decision is section 39(2) which is the UK Act equivalent of section 37(2)(b) of the Act which states:

Accordingly section 64 of the UK Act has been held to exclude rectification where the correction sought would not be allowed by section 39(2) of the UK Act. In New Zealand, therefore, an application for rectification will not be allowed where the rectification sought would contravene section 37(2) of the Act. The rectification may not “materially alter the meaning or scope of the registration”. If the proposed rectification did materially alter the meaning or scope of the registration then that would mean that an “unwaivable statutory requirement” would have been circumvented. All but the most minor amendments to a trade mark are likely to affect the meaning or scope of the registration.

The scope of the term “validity” as it appears in section 76(3) of the Act is to be interpreted quite broadly. The UK Trade Marks Office considers the following to be corrections that affect the validity of a trade mark registration:

• An alteration to the identity of the trade mark itself;
• The broadening of a specification or the addition of something new to a specification; and
• Any other matter which might otherwise be more properly dealt with under another section of the Act, or which might involve circumvention of statutory requirements.

The amendment of the ownership of a trade mark registration has been found not to affect the validity of the trade mark registrations.¹⁴

Footnotes

¹³ Section 76(3) of the Trade Marks Act 2002.

¹⁴ WALKERLAND, BL O-283-02, 19 July 2002 (UK).