As discussed in our 22 September 2009 posting, the Trade Marks Amendment Act 2011 (the Amendment Act) came into force in New Zealand last month. The Amendment Act, previously known as the Trade Marks (International Treaties and Enforcement) Amendment Bill, has effected some important changes to the Trade Marks Act 2002 (the Act) which people should be aware of if they currently, or may in the future, own (or have any interest in) a trade mark.
Nice Classification of Trade Marks
When a trade mark is registered, it is registered in respect of goods and/ or services which the owner specifies. This is called a classification and allows a trade mark to be easily searched and grouped together with other trade marks. The Nice Agreement establishes a classification system of which there are 34 classes for goods and 11 classes for services.
The Intellectual Property Office of New Zealand (IPONZ) has used this classification system since the first Trade Marks Act in 1953, however it has not yet acceded to the Nice Agreement. Accordingly New Zealand has no voice in its development which would allow the classification of goods and services to meet the needs of IPONZ as well as trade mark owners.
To effect New Zealand’s accession to the Nice Agreement, the Amendment Act prescribes that all trade marks must be classified according to the Nice classification system, including the reclassification of marks which were registered before the 1953 Act.
International Registrations under the Madrid Protocol
The Madrid Protocol establishes a system of international trade mark applications. Instead of filing separate applications in different jurisdictions, a person in a country which is a party to the Madrid Protocol can file one application in respect of a select group of overseas countries it seeks protection in (these countries must also be a party to the Madrid Protocol). Registration of the international applications however depends on the individual assessment of each of the select country offices.
For the purpose of giving effect to the Madrid Protocol, the Amendment Act establishes the Patent Office as New Zealand’s office of origin and allows for regulations to be made regarding:
- applications for international registration;
- the processing of applications and registrations, whether basic (i.e. based on an application in the Office of origin) or an extension of protection (i.e. New Zealand as a selected country);
- communicating information to WIPO (the international bureau); and
- the application of legal proceeding and border protection measure provisions to international registrations.
While acceding to the Madrid Protocol will simplify the process by which trade mark applicants in New Zealand can protect their trade mark overseas (which generally results in cost savings), the same benefits will be available to people in overseas countries who have an protectable interest in New Zealand.
Parallel Importing
Previously under the Act, a trade mark would not be infringed if it was used in relation to goods that have been put on the market anywhere in the world under that trade mark by the owner or with the owner’s express or implied consent i.e. parallel importing. This presented difficulties in terms of corporate structure and distribution chains; for an example a parent company distributing goods through national subsidiaries.
The Amendment Act seeks to clarify these difficulties by extending this permitted use to goods put on the market by an “associated person of the owner”. This is defined and includes, among others, a person in the same group of companies (including holding companies and its subsidiaries) and a person who has effective control (i.e. significant influence of authorisation including via contract, arrangement or understanding) of the other’s use of the trade mark.
Suspension of Border Protection Notices
The Amendment Act establishes a provision under which a notice lodged and accepted under section 137 of the Act, defined as an “Accepted Notice”, can be suspended if for example information is incorrect or out of date. An Accepted Notice will not be in force during this time. The person who lodged the Accepted Notice will however be given written notice by Customs and an opportunity to respond.
Removal of Licensees on the Trade Marks Register
To more closely align New Zealand trade mark procedures with the Singapore Treaty, the Amendment Act removes all provisions which allowed a licensee to register its interest on the Trade Marks Register. Accordingly all licensees registered will be removed by IPONZ.
A memorandum which relates to a trade mark is still able to be entered on, altered and removed from the register.
Other
The Amendment Act also clarifies several provisions relating to acts not amounting to infringement and administrative powers of the Trade Marks Commissioner.
We will provide readers with an update once New Zealand formally accedes to these international treaties. In the meantime, if you own a trade mark, are contemplating applying for a trade mark, or have an interest in a trade mark (i.e. a licensee) and have any questions regarding the Amendment Act, contact a New Zealand trade mark advisor for more information.