Significant amendments to IP legislation proposed

The New Zealand government, recognizing the growing trade in illegal counterfeit goods, has proposed changes to the Trademarks Act 2002 and the Copyright Act 1994 to increase the powers of the New Zealand Customs Service at the border.

Given New Zealand's comparatively small size by international standards, the release of counterfeit goods onto the New Zealand market can result in a substantial loss of profits for rights holders. As such, stopping the entry of counterfeit goods into New Zealand at the border is by far the most effective means for rights holders to enforce their IP rights.

Many rights holders rely on Customs to prevent the entry of counterfeit and pirated goods into New Zealand; in this regard, Customs now has considerable experience in identifying and detaining such goods at the border. The proposed changes aim to ensure that rights holders retain confidence in border control measures.

The proposed amendments will enable Customs to initiate discretionary prosecutions against importers of counterfeit and pirated goods. They also suggest granting Customs investigative powers specifically for counterfeit and pirated goods under Customs control.

These amendments will be included in the Trademarks (International Treaties and Enforcement) Amendment Bill, which is expected to be introduced in March 2008. The bill will also contain legislation necessary to enable New Zealand to join:

• the Madrid Protocol;
  
  
• the Nice Agreement Concerning the International Classification of Goods and Services; and
  
  
• the Trademark Law Treaty (Singapore).

Despite New Zealand having not officially adhered to the Nice Agreement, the Intellectual Property Office of New Zealand has been using the Nice Classification for many years. It is expected that New Zealand will not join the Madrid Protocol until 2009.

In addition, New Zealand awaits the passing into law of the Copyright (New Technologies and Performers' Rights) Amendment Bill, the progress of which has been slow. The bill amends the Copyright Act and reforms important aspects of New Zealand's IP regime. It addresses issues such as format shifting of sound recordings for private and domestic use, and enables performers to exercise control over the recording of their performances and the distribution of these recordings. It is expected that the bill will be passed later this year.

Carrick Robinson, James & Wells, Auckland