3.5 Bona Vacantia

¹⁸Where a company has been removed from the New Zealand Companies Register and its’ trade mark registration was not assigned (whether by deed or by operation of law) to another person immediately prior to the company’s removal, the registration is prima facie bona vacantia and vests in the Crown by virtue of section 324 of the Companies Act 1993. As the owner of the trade mark registration no longer exists as a legal entity, it is not able to assign the ownership of the trade mark registration to an interested party.

Where the ownership of the trade mark has vested in the Crown, it is possible to request the Crown to transfer ownership of the registration. The Treasury is the government agency that deals with requests for the Crown to deal with bona vacantia property. In particular, The Treasury’s Legal Group advises on such requests.

To record such an assignment, IPONZ requires:

• A completed application to record a transmission under s82(2) of the Act, to account for the transmission of the registration from the Company to the Crown and from the Crown to the interested party; and
• Supporting documentation including copies of any documents and evidence required by Treasury.

The Treasury will advise of any documents and evidence required to action a bona vacantia request on a case by case basis. However, in relation to the assignment of a trade mark to an interested party, the following documents may be required by The Treasury:

1. A Statutory Declaration by a Director of the company (or Public Accountant, Solicitor or Company Secretary) at the time of removal from the register:

• setting out the facts about the registration;
• setting out the circumstances surrounding the removal from the register without first transferring the registration; and
• deposing to the effect that the Company held the registration in its own right and not on trust for any other body corporate or any other person

2. An application by an interested party requesting the Crown to deal with the matter as bona vacantia pursuant to section 324 of the Companies Act, together with an indemnity from the appropriate person (usually the interested party) in favour of the Crown indemnifying the Crown in respect of all or any liability that may be incurred by the Crown in respect of all actions taken in transferring the ownership of the trade mark registration.

3. A letter from the Companies Office certifying that the company was dissolved, the section of the Companies Act under which the company was removed from the register, the date of removal and the reference to its publication in the Gazette (if this was done). The certificate should also state that the company has not been restored to the Register.

4. A photocopy of the extracts from the Trade Marks Register duly certified as being a true copy of the originals.

5. Written consent from the Shareholder/s at the time the company was removed, consenting to the transfer of the ownership of the trade mark registration to the interested party.

Please note that the Crown is entitled to recover their costs and may require payment in advance. Any person wishing to pursue this option is expected to deal directly with The Treasury. For more information, email information@treasury.govt.nz.

Footnotes

¹⁸ Practice Guideline Amendment 2007/03, Intellectual Property Office Newsletter, 1 August 2007.