NEWS FLASH: SINGAPORE TREATY COMES INTO FORCE ON MONDAY 16TH MARCH 2009

In 2006 New Zealand took part in a Diplomatic Conference where an international approach to trade mark formalities was discussed, in an attempt to reduce unnecessary compliance costs and restrictions for trade mark owners.

The result was the adoption of the Singapore Treaty on the Law of Trademarks.

With the ratification of the Treaty by a tenth Member State in December last year, the Treaty has now come into force. The full text of the Treaty can be found here: http://www.wipo.int/treaties/en/ip/singapore/index.html

New Zealand has not yet ratified or acceded to the Treaty as first a number of amendments to the Trade Marks Act 2002 are required including:

• allowing division of a trade mark registration as well as a trade mark application;
• permitting the previous owner of a trade mark to apply for assignment or transmission, rather than requiring such an application to be filed by the new owner of a trade mark; and
• amendment of provisions in relation to licensees.

The requisite amendments to the Act have been included in the Trade Marks (International Treaties and Enforcement) Amendment Bill 2008 which was introduced to Parliament in September 2008 and reinstated to the Order Paper in December 2008. No timetable has been issued for the progress of the Bill, however, it is unlikely to come into force until 2010.