Two for one in the House: International Treaties and Enforcement Bill
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Parliament has introduced the Trademarks (International Treaties and Enforcement) Amendment Bill. The bill contains provisions amending both the Trademarks Act 2002 and the Copyright Act 1994. It will be split into two separate bills before the committee of the whole house stage.
The bill’s two main purposes are to:
- amend the Trademarks Act so that New Zealand can join and comply with the Singapore Treaty on the Law of Trademarks, the Nice Agreement and the Madrid Protocol; and
- add provisions to both acts as part of the battle to crack down on counterfeiting and piracy.
The provisions will give enforcement powers to both the Ministry of Economic Development and Customs in respect of the criminal provisions of both acts, including the appointment of national enforcement officers by the ministry.
Both the Trademark Act and the Copyright Act already include provisions relating to criminal offences for cases of wilful counterfeiting or piracy on a commercial scale. These partly fulfil New Zealand’s obligations under the Telephony Routing over Intellectual Property Protocol. The task of enforcing these provisions rests with the police. This has implications, given that such offences are commonly regarded as ‘victimless crimes’, at least when compared with crimes against the person or more tangible forms of property. These crimes are regarded as low-priority matters by a police force with overstretched resources.
The new sections of the bill propose to:
- provide national enforcement officers within the existing National Enforcement Unit (NEU) with new powers and duties; and
- grant customs officers increased powers.
Customs will focus on border enforcement and the NEU on post-border enforcement. Both the NEU and Customs will have warranted powers of search and seizure, as well as the power to share information with other enforcement agencies (eg, the police), in order to identify persons breaching the criminal provisions of the acts. Customs will receive non-warranted powers to seize counterfeit goods at the border where those goods come within their control, and the NEU will have non-warranted powers to undertake search and seizure where counterfeit goods are being offered for sale in a public place.
The bill also attempts to address a number of technical issues in the Trademarks Act.
First, an amendment to Section 66 would clarify that in order to revoke a registration on the grounds of non-use, the mark must have been unused for an uninterrupted three-year period. Previously, there was confusion over the additional right to revoke a registration on the grounds that use had been suspended for an uninterrupted three-year period.
Second, an amendment to Section 97A would extend legitimate parallel importing, so that a mark would not be infringed if it were put into the market overseas by an 'associated person of the owner'. This would include companies within a group of companies and a person with effective control over the use of the trademark.
When drafting of this bill began in 2006, the government issued the following media release:
“New Zealand's economic transformation depends on us becoming a country that produces high-value goods and services based on new ideas and innovation. We want to see Kiwi ingenuity protected in other jurisdictions in an efficient and effective way.”
At a time when many economies and consumers are struggling simply to stay afloat, the enactment of a bill that reduces compliance costs and encourages traders to expand more easily into foreign markets would indeed be desirable. However, given that elections are due to take place on November 8 2008, it will take some Kiwi ingenuity to get this bill into force any time soon.
David Marriott and Rachel Dawson, James & Wells Intellectual Property, Auckland and Christchurch
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