New Zealand – Trade Marks (International Treaties and Enforcement) Amendment Bill

By: Henry Hughes, Patent & Trade Mark Attorneys  04-Dec-2008
Keywords: Brand, Intellectual Property, Trade Mark

On 8 September 2008, the Trade Marks (International Treaties and Enforcement) Amendment Bill was introduced into Parliament. The Bill will amend both the Trade Marks Act 2002 (“the Act”) and the Copyright Act 1994.

The most notable amendments proposed in the Bill reflect the Government’s decision to:
- join the Nice Agreement, the Singapore Treaty, and the Madrid Protocol;
- bolster the enforcement of the criminal offence provisions in respect of counterfeit goods;
- clarify the law relating to trade mark infringement by parallel imported goods;
- remove the ability to voluntarily register licensees against trade marks.

Broadly speaking, the Bill proposes to amend the Act so that New Zealand can join the Nice Agreement, the Singapore Treaty, and the Madrid Protocol and fulfil its obligations under those treaties. By making provision for these treaties, New Zealand has shown its commitment to keeping in line with international trade mark practice.

The importation and sale of counterfeit goods is a growing problem in New Zealand, with the majority of counterfeit goods being sourced from overseas. Since July 2000, the number of counterfeit goods that have been detained by the New Zealand Customs Service (“Customs”) has increased by over 400%. To combat this, the Bill proposes to include new sections in the Act which provide Customs and the National Enforcement Unit (“NEU”) of the Ministry of Economic Development with extra resources and investigative and prosecution powers.

It is a criminal offence under the Act to import and/or sell counterfeit goods. The additional resources and powers that have been suggested under the Bill would enhance the ability of Customs and the NEU to enforce the criminal offence provisions in the Act.

The Bill also attempts to clarify the parallel importation provision in the Act. At present, a registered trade mark will not be infringed by the use of that mark in relation to goods that have been “put on the market anywhere in the world under that trade mark by the owner or with his or her express or implied consent.” The Bill would expand this provision so that infringement will not occur if the mark concerned is used for goods put on the market by the owner or with the owner’s consent or by “an associated person of the owner”. Under this proposed amendment, legitimate parallel importing cannot be thwarted by “an associated person of the owner”, which includes parties within the same group of companies as the trade mark owner or parties that have effective control over the use of the relevant trade mark.

The Bill also removes the provisions allowing the voluntary registration of licensees against trade marks. There are currently 13,000 licensee entries on the register, and these entries will be removed when the Bill is enacted.

Given the recentGeneral Election and change of government, Parliamend is in recess. Therefore,it is uncertain when the Bill will progress through Parliament and come into force – and whether there will be any amendments along the way. (December 2008)

Keywords: Brand, Intellectual Property, Trade Mark

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