New act brings significant changes to trademark legislation

New Zealand
On September 8 2011 the Trademarks Amendment Bill (previously the Trademarks (International Treaties and Enforcement) Amendment Bill) was passed. The bill received royal assent on September 15 2011 as well as a new name, becoming the Trademarks Amendment Act 2011.

The act is a significant piece of new IP legislation for New Zealand. The main purpose of the act is to:
  • amend the Trademarks Act 2002 to give effect to New Zealand’s decision to ratify the Singapore Treaty on the Law of Trademarks, and to accede to the Nice Agreement Concerning the International Classification of Goods and Services, as well as the Madrid Protocol, to finally bring New Zealand into line with a number of its major trading partners; and
  • add provisions to the Trademarks Act 2002 to support the ongoing battle against counterfeit goods and pirated works, by the appointment of national enforcement officers, and additional enforcement powers for New Zealand Customs officers in order to extend the ability to enforce the existing criminal provisions.
The act also addresses a number of unresolved technical issues in the Trademarks Act 2002, unrelated to the above, including the following:
  • Amendment of the non-use provisions to clarify that, to revoke a trademark registration on the basis of non-use, the mark must not have been used for a continuous period of three years. Previously, there had been some confusion over the additional right to revoke a registration on the basis that use had been suspended for an uninterrupted period of three years.
  • Amendment of the parallel importing provisions such that a registered mark is not infringed if the mark has been put into the market overseas 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 trademark.
  • Amendment of the assignment provisions to allow the previous owner to apply for the assignment of a trademark (previously, only the new owner could apply).
  • Repeal of the provisions governing the registration of licensees - this means that all registrations of licensees made under the act are revoked and will be removed from the Register.
Some of these changes are long overdue, particularly so in respect of New Zealand joining the Madrid Protocol. The next step will be the drafting and introduction of the appropriate regulations to give effect to the changes brought about by the act. It is hoped that the drafting of the regulations is made a priority, as assistance to brand owners in reducing compliance costs and enforcing their rights is long overdue.

Carrick Robinson, James & Wells Intellectual Property, Auckland

Get unlimited access to all WTR content