Intellectual property, copyright and trade mark solutions - news

By: Zone  05-Apr-2012
Keywords: Law, Intellectual Property, Trademark

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The Trade Marks (International Treaties and Enforcement) Amendment Bill 2008 was introduced in Parliament on 8 September 2008. It has a number of significant changes for New Zealand businesses, and is expected to become law by the end of 2009.

Some of the background reasons for the changes are that New Zealand faces a number of barriers in terms of its international trade. These barriers include institutional, legal and regulatory differences with its trading partners that create costs for New Zealand businesses.

The Bill aims to ensure that the regulations governing trade mark registration in New Zealand are aligned with those of our leading trading partners which will assist to:

•   Reduce business transaction and compliance costs for New Zealand businesses

•   Create increased legal certainty for business

•   Increase the credibility of New Zealand’s trade mark regime, thereby creating an environment conducive to both foreign and domestic business investment

•   Reduce barriers to market entry.


The Madrid Protocol provides a simplified system for filing trade marks internationally and thereby reducing the cost for New Zealand trade mark owners seeking international trade mark protection.

Currently, if you want to apply for a trade mark overseas, you have to file separately in each country, in each country’s language and pay each country’s separate fee.

Under the new system, a trade mark owner will only have to file one application in one language and pay one fee. The Madrid Protocol system offers a trade mark owner the possibility to have his or her trade mark protected in up to 68 member countries by simply filing one application directly with their own national or regional trademark office and designating the overseas countries where protection is desired via the International Bureau of the World Intellectual Property Organisation (WIPO).

The Madrid Protocol does not automatically grant you trade mark protection in the countries you select, and each country’s Trade Mark Office will examine your application separately. It will however reduce your costs by allowing you to file applications in a number of countries at the same time. Applicants will pay a single fee based on the number of countries they choose to apply in.


The Nice Agreement governs the standard international classification of goods and services for the registration of trade marks. Use of the Nice Classification by national Trade Marks Offices has the advantage of filing applications with reference to a single international classification system. The preparation of applications is thereby greatly simplified, as the goods and services to which a given mark applies will be classified in the same way in all countries that have adopted it. Furthermore, the fact that the Nice Classification exists in several languages saves applicants a considerable amount of work when they have to file a list of goods and services in a language other than that of the country of origin of the mark.

New Zealand currently uses this international classification system but will formally become a party to the Nice Agreement once the Bill becomes law.

There are over 1,000 active trade marks that were registered in New Zealand before 11 December 1941 (Third Schedule registrations) which are not classified under the Nice Classification system. The Bill will allow the Intellectual Property Office of New Zealand to re-classify these Third Schedule registrations to the current Nice Classification system. The Intellectual Property Office of New Zealand will write to the registered owner of the trade mark or their agent and propose a classification. The registered owner will have the opportunity to either accept the proposed classification, or provide an alternative classification within a specified period.

If there is a dispute over the classification of the good or service, the normal appeal procedures specified in the Trade Mark Regulations will apply. The conversion of a trade mark registration to additional classes under the Nice Classification system will result in additional renewal fees.


The aim of the Trademark Law Treaty 1994 (TLT) is to make national trade mark registration systems more user-friendly. This is achieved through the simplification and harmonization of procedures and through removing pitfalls, thus making the procedure safe for the owners of marks and their representatives.

The TLT was concluded in 1994 and is open to States members of WIPO. There are currently 33 countries party to the TLT, including some of New Zealand’s leading trade partners, such as Australia, Japan, the United States and a number of European Union countries like the United Kingdom and Germany. While New Zealand is a Member State of WIPO, it has not acceded to the TLT. The Trade Marks Act 2002 incorporates many of the standards prescribed by the TLT. There are, however, a several areas where the Trade Marks Act 2002 will be amended by the Bill to enable accession to the TLT.


The recordal (or registration) of a trade mark licence is voluntary under the Trade Marks Act 2002. The Bill will remove the process of registering licensees against a trade mark and cancel all licensees registered under the Trade Marks Act 2002.

The Bill aligns New Zealand with Australia regarding the rules and actions governing licensees for infringement and border protection measures. Whether or not a licensee can take action against infringement or lodge a border protection notice will be determined by the license agreement between the trade mark owner and the licensee. Any authorised licensee of a trade mark will be able to launch infringement proceedings, rather than just a licensee registered under the Trade Marks Act 2002.

This is an important change, and the Zone Corporation recommends that all trade mark licensors and licensees should review their license agreements to ensure that they are appropriate under the new Act.


The TLT requires an office to accept an application to change the ownership details made by either the original owner or the new owner, in a communication indicating the registration number and the change to be recorded. Currently only the new owner of a trade mark may make an application to amend the ownership details on the Trade Marks Register.


Counterfeit products have been increasing dramatically over the last few years and the New Zealand Customs Service (Customs) has been hampered by the scope of its powers. The Bill will provide extra resources and investigative and prosecuting powers to Customs and the Ministry of Economic Development to enforce the criminal offences set out in the Trade Marks Act 2002. The powers and duties of the National Enforcement Unit (NEU) will be expanded, enabling the NEU to focus its investigative powers on post-border enforcement. Customs will be able to:

•   seize (without warrant) any goods subject to Custom's control that a Customs officer has reasonable grounds to believe are evidence of certain offences;

•   require persons they believe have imported goods to provide information and answer questions relevant to determining whether the goods should be retained or released;

•   apply for a judicial order authorising the production of documents and other information believed to be evidence of an offence in respect of the imported goods;

•   apply for a search warrant to search any place or thing believed to contain evidence of an offence in respect of the imported goods;

•   take photographs or sound or video recordings during searches.

Keywords: Intellectual Property, Law, Trademark, Trademark Application

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