Recently announced cooperation between IPONZ and their Australian counterpart provides new momentum towards harmonized trade mark examinations. As a result New Zealand businesses operating in Australia should be less likely to find applications for their brands treated differently across the Tasman.
Coordination
Efforts to coordinate New Zealand and Australian business law have taken shape since the two Governments’ Memorandum of Understanding in August 2000. Given Intellectual Property’s essential role in establishing and maintaining a business, it came as no surprise that both governments expressed intention to “explore the potential for more closely coordinating the granting and recognition of Intellectual Property rights.”
This exploration led to the announcement in 2004 by Intellectual Property Australia (IPA) and the Ministry of Economic Development New Zealand of a joint work programme on Intellectual Property coordination. A seamless trans-Tasman Intellectual Property processing regime was in sight; but first it was necessary to ensure alignment of trade marks examination practices between IPA and the Intellectual Property Office of New Zealand (IPONZ) was possible.
On 1 February 2010, the third stage of the trans-Tasman Trade Mark Harmonization Project will commence.
Trans-Tasman Trade Mark Examination Project
Stage One
This involved the comparison of 200 applications in both countries for similarities and differences in outcomes, IPA’s Manual of Practice and Procedure and IPONZ Practice Guidelines, as well as the Cross-Class Search lists for both countries which are used to identify goods or services which are considered similar or related. This revealed that 73.5% of examination outcomes were the same. The two Offices’ Manuals and Guidelines also proved a suitable case for alignment; a stance which the cross-class list comparison results also presented significant scope for.
Stage Two
159 trade mark applications which had differences in initial examination outcomes were concurrently discussed and results aligned where possible. Contact was made between both Offices during this examination period to optimize consensus. Practice and opinion differences were reduced to 8%.
Stage Three
This will focus on the actual examination of trade marks by IPA and IPONZ. It is the objective of this trial to align “examination decision making (within the ambit of respective legislative regimes), mutually acceptable quality assurance standards and audit processes, and operational practices.” Applicants submitting trade marks in both countries will have the option to volunteer their trade mark as a tester, allowing each Office to recognize prior examination decisions made by the other.
Single business environment
There is no doubt that a seamless trans-Tasman business environment will reduce compliance costs and other regulatory barriers. Trade mark applicants for both countries would no longer have to be involved in the same process twice, eliminating the need to repeat provision of the same information to the two Offices separately. Ultimately this would introduce a more efficient and consistent registration of trade marks which businesses will benefit from.
There is however concern that the idea of a single economic market will not take into account national identity and policy objectives, for example issues of interest to Maori in New Zealand. However, a joint statement produced by Prime Ministers Kevin Rudd and John Key in August 2009 exhibits caution, noting the options for harmonization of Intellectual Property “need not necessarily involve harmonization of law or the creation of joint institutions but may take other pragmatic approaches.”
The Australian / New Zealand position is not without precedent. In the European Union (EU) the process has gone one step further with not only the harmonization of each individual country’s trade mark law but the creation of a single trade mark right which is valid across the entire EU. Such a registration only requires a single application to one Office (the Office of the Harmonization in the Internal Market) which processes all applications for Community Trade Marks from all member states.
Nonetheless, although this is a step that draws New Zealand and Australian Intellectual Property relations together; a single trans-Tasman trade mark right stands a considerable way down the line.