BILL UPDATES TRADE MARK LAW

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The bill has two main purposes, namely:

• To amend the Trade Marks Act so that New Zealand can join a number of international trade mark treaties (namely the Singapore Treaty, the Nice Agreement and the Madrid Protocol)
• To add provisions into the Trade Marks Act and the Copyright Act for the appointment of national enforcement officers and to grant customs officers greater powers against acts of counterfeiting and piracy

International treaties

One of the common aims of the international treaties is to simplify the trade mark application process and reduce time and compliance costs for applicants.

For example, the Singapore Treaty sets out the only administrative requirements that are allowable by intellectual property (IP) offices, thereby leading to consistency for applicants. New Zealand already complies with many of this treaty’s provisions. The few changes that are required are purely procedural. For example, provision would be made for the previous or new owner of a trade mark to apply for assignment of a trade mark, whereas currently only the new owner of a trade mark may apply.

The Nice Agreement relates to an international system for the classification of goods and services into 45 classes. Eighty-one countries are members of the Nice Union (including New Zealand’s major trading partners) and this consistency in classification enables users to search specific classes of interest to monitor potentially conflicting marks and to undertake clearance searches before launching in markets of interest.

In order for New Zealand to adhere to the Nice Agreement, 1,300 registrations classified before we started using the Nice system in 1941 will need to be transferred. These "third schedule" registrations (which refer to the regulations in force at the time) are classified into 50 classes that have no relation to the Nice system. For instance, a trader interested in beds would search Nice class 20, but would also need to search Third Schedule class 41 to find any registrations relating to beds. Class 20 under the Third Schedule relates to (arguably) dissimilar goods, namely "explosive substances". Unless the trader was aware of the need to search additional classes, they might miss a crucial registration that would prevent them obtaining a national registration in New Zealand or cause them to un knowingly infringe another trader’s rights, thereby wasting unnecessary time and money.

The Madrid Protocol sets out an international registration system, whereby one application can be filed for all countries that are member states, thereby reducing administrative time and costs in individual national applications. New Zealand is one of the last developed countries to become a party to the protocol, although delays in becoming a member may in reality be beneficial for New Zealand, given that our intellectual property office is currently suffering examination delays.

Enforcement

The bill also proposes the inclusion of new sections in the Trade Marks Act and Copyright Act providing for the appointment, powers and duties of national enforcement officers within the existing National Enforcement Unit (NEU) and setting out enforcement powers of customs officers.

Pursuant to its international obligations, New Zealand has included criminal offences for acts of counterfeiting and piracy in the Trade Marks Act and Copyright Act. However, the enforcement of these provisions until now has rested mainly with the Police. These additional provisions would enable the NEU and Customs to assist and supplement the powers of the Police.

Miscellaneous amendments

The bill also attempts to address a number of technical issues in the Trade Marks Act 2002 that are unrelated to the above. For example, it proposes to amend the parallel importation provisions to clarify that legitimate parallel importing cannot be obstructed by an "associated person of the owner", which includes companies within the same group of companies and a person who has effective control of the use of the trade mark.

This article was published in New Zealand Law Society’s ‘LawTalk’, Issue 719 November 2008.

By Rachel Dawson, Senior Solicitor