New Zealand one step closer to joining international IP treaties

On April 7 2009 the Trademarks (International Treaties and Enforcement) Amendment Bill had its first reading in Parliament. The bill has now been referred to the Foreign Affairs, Defence and Trade Committee. Although no submissions have yet been requested, current indications are that the committee will release its report on the bill in October 2009.

The bill proposes amendments to the Trademarks Act 2002 and Trademarks Regulations 2003 to enable New Zealand to join the Nice Agreement, the Singapore Treaty and the Madrid Protocol. In particular, the bill proposes to:

amend the regulations to enable the commissioner of trademarks to reclassify approximately 1,300 trademark registrations which do not comply with the Nice Classification system;
introduce the ability to divide trademark registrations into multiple registrations (under current practice, it is possible to divide only trademark applications);
amend the assignment provisions to allow the previous owner to apply for the assignment of a trademark (previously, only the new owner could apply); and
repeal the provisions governing the registration of a licensee (although registration is voluntary, it may affect the licensee’s ability to sue).

Although both the Trademarks Act and the Copyright Act 1994 contain criminal offences for counterfeiting and piracy, the enforcement of these provisions has predominantly relied on the powers of the New Zealand Police. The bill thus proposes to:

appoint national enforcement officers; and
provide additional enforcement powers for New Zealand Customs officers to extend their ability to enforce the existing criminal provisions.

The bill also attempts to address a number of unresolved technical issues in the Trademarks Act. Among other things, it proposes to:

amend 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 was 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); and
amend the parallel import provisions such that a registered mark is not infringed if the mark has been put on the market overseas by an "associated person of the owner", which includes companies within the same group of companies and persons who have effective control over use of the mark.

Drafting of the bill began in 2006, and it has taken almost three years for the bill to progress to its first reading. It is hoped that the bill will be made a priority, as assistance to brand owners in reducing compliance costs and enforcing their rights is long overdue.

Rachel Dawson, James & Wells Intellectual Property, Auckland

New Zealand one step closer to joining international IP treaties

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