Discussion paper foreshadows implementation of new trademarks law

The government has released a discussion paper on proposals for new regulations that will complement the recently passed Trademarks Act 2002. The submissions received may be taken into account during the final drafting process. If all goes smoothly, the new act and regulations are expected to be in force later this year.

The Trademarks Act 2002, which will replace the Trademarks Act 1953, was the result of a long-overdue rewrite of New Zealand's trademark law and will bring New Zealand into compliance with several obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights. Although enacted in December last year, the new act will not come into force until complementary regulations take effect. Therefore, a draft of the new regulations is eagerly awaited.

The new regulations will replace, and are expected to be substantially different from, the Trademark Regulations 1954. For example, the discussion paper contains the following important proposals regarding multi-class trademark applications:

• The filing of multi-class trademark applications should be permitted;
  
  
• Procedures for the division and merger of applications and registrations should be established; and
  
  
• There should be no reduction in the filing fees for the second and subsequent classes covered by a multi-class application (as is the case with the United Kingdom's two-tiered fee structure).

Submissions on the discussion paper will be accepted until June 11 2003 and can be filed electronically via the following email address: [email protected].

For additional information on the Trademarks Act 2002, see New Trademarks Act receives royal assent.

Carrick Robinson, James & Wells, Auckland