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Digest No. 1671

Trade Marks (International Treaties and Enforcement) Amendment Bill 2008

Date of Introduction: 08 September 2008
Portfolio: Commerce
Select Committee: As at 25 March, 1st Reading not held.
Published: 25 March 2008Prepared by John McSoriley BA LL.B, BarristerLegislative AnalystP: (04) 471-9626 (Ext. 9626)F: (04) 471-1250 Caution: This Digest was prepared to assist consideration of the Bill by members of Parliament. It has no official status.Although every effort has been made to ensure accuracy, it should not be taken as a complete or authoritative guide to the Bill. Other sources should be consulted to determine the subsequent official status of the Bill.

Purpose

The aim of this Bill is to amend the Trade Marks Act 2002 and the Copyright Act 1994 to:

  • accede to the Madrid Protocol Relating to the Madrid Agreement (the Madrid Protocol);
  • accede to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the Nice Agreement);
  • ratify the Singapore Treaty on the Law of Trademarks (the Singapore Treaty);
  • empower the Ministry of Economic Development (the Ministry) and the New Zealand Customs Service (Customs) to enforce the criminal offence provisions under the Trade Marks Act and the Copyright Act 1994 (the Copyright Act) related to counterfeit goods and pirated works (counterfeits) and
  • address a number of miscellaneous issues with the Trade Marks Act [1]   .

Background

What is a trade mark?

The term "trade mark" is defined generally in the Trade Marks Act 2002 as any sign or any combination of signs capable of being represented graphically and distinguishing the goods or services of one person from those of another person. A registered trade mark is personal property (as opposed to land (called real property)) and the owner has all the legal rights available to any owner of personal property and also has certain other rights including to:

  • use the registered trade mark;
  • authorise other persons to use the registered trade mark;
  • assign or transmit the registered trade mark (Sections 5 to 11 of the Trade Marks Act 2002).

Madrid Protocol

The Madrid Protocol relates to procedure and joining it " ... will provide New Zealand trade mark owners with the possibility of having their trade marks protected overseas by filing 1 application for registration of a trade mark with the Intellectual Property Office of New Zealand and designating one or more overseas countries who are also members of the Madrid Protocol where protection is sought. Overseas trade mark owners would also be able to use the Madrid Protocol to protect their trade marks in New Zealand" [2]   .

Nice Agreement

The term "Nice Agreement" is defined in the Bill (Clause 4(1)) as the "Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the registration of Marks adopted at Nice on 15 June 1957 as amended from time to time". "The Nice Agreement provides a classification system for goods and services for the purposes of registering trade marks (the Nice Classification). Those countries that are party to the Nice Agreement must apply the Nice Classification to registered trade marks, although those countries not party may still apply the Nice Classification. New Zealand has applied the Nice Classification to registered trade marks for many years" [3]   .

Singapore Treaty

"The Singapore Treaty aims to make national trade mark registration systems more user-friendly and to reduce business compliance costs for trade mark owners. It does this through the simplification and international harmonisation of national registration procedures" [4]   .

Main Provisions

Amendments to the Trade Marks Act 2002

The Bill makes many detailed technical and procedural changes to the Trade Marks Act 2002 and these are described in some detail in the clause by clause analysis in the Bill's explanatory note (pages 5-12) of the Bill. The main legal ly significant changes made by the Bill are described below.

Nice classification

The Bill provide that, for the purposes of registration of trade marks, goods and services must be classified according to whichever edition of the Nice Classification is in force at the time of the application for registration (Clause 5, amending Section 31 of the Trade Marks Act 2002.

Enforcement officers and legal proceedings

The Bill provides in some detail for the appointment and functions of enforcement officers appointed by the chief executive who must issue them with warrants of appointment. Such warrants would be prima facie evidence of enforcement officers' authority. The functions of enforcement officers are:

  • the gathering of information relating to offences under this Bill;
  • investigating offences under this Bill;
  • reporting to the chief executive on any matters relating to the enforcement officer's functions.

Enforcement officers are given powers of entry and examination without warrant and also powers of entry and search under warrant which are also made available to the Police. Provision is made in relation to various powers and duties of persons exercising powers of entry and examination without warrant or entry and search under warrant, and the retention, return, and disposal of things seized. The Bill provides for the privileges a person has for communications with legal advisers (including registered patent attorneys) and for preparatory materials for proceedings, and the power of a District Court Judge to determine the validity of a claim to privilege. The Bill also provides for the disclosure of information between agencies and for the immunity of enforcement officers and persons assisting enforcement officers and members of the Police (Part 1, Clause 17, inserting New Subpart 2A of Part 4 into the Trade Marks Act 2002, New Sections 134A-134ZA).

Enforcement by customs officers.

The Bill provides that a customs officer may seize imported goods in the control of Customs if he or she has reasonable grounds to believe that they are evidence of an offence against Sections 120 [5]   to 124 [6]   of the Trade Marks Act 2002, or are of significant relevance to the investigation of such an offence. The Bill makes detailed provisions in respect of the functions, powers and authority of customs officers in this context, particularly in relation to the productions of documents (Clause 21, amending Part 4, Subpart 3 of the Trade Marks Act 2002, by inserting New Sections 155A-155K).

Amendments to the Copyright Act 1994

The Bill makes detailed amendments to the Copyright Act 1994. That Act creates and protects property rights as defined in original works which are: literary, dramatic, musical, or artistic works; sound recordings; films; communication works; and typographical arrangements of published editions (Section 14 of the Copyright Act 1994).

The amendments made to the Copyright Act 1994 have broadly the same purpose and largely parallel those amendments made by the Bill to the Trade Marks Act 2002 and described above.

The amendments are clearly described in the clause by clause analysis of the explanatory note to the Bill (see pages 12-14) (Part 2, Clauses 28-40).

Copyright: © NZ Parliamentary Library, 2009
Except for educational purposes permitted under the Copyright Act 1994, no part of this document may be reproduced or transmitted in any form or by any means, including information storage and retrieval systems, other than by Members of Parliament in the course of their official duties, without the consent of the Parliamentary Librarian, Parliament Buildings, Wellington, New Zealand.This document may also be available through commercial online services and may be viewed and reproduced in accordance with the conditions applicable to those services.

  1. Trade Marks (International Treaties and Enforcement) Amendment Bill, 2008 No 245-1, Explanatory note, General policy statement, pp. 1 and 2.   [back]
  2. Ibid., p. 2.   [back]
  3. Ibid., pp. 2 and 3.   [back]
  4. Ibid., p. 3.   [back]
  5. Section 120 of the Trade Marks Act 2002 (headed: "Offence to counterfeit registered trade mark") provides that every person commits an offence who, with the intention of obtaining a gain for himself or herself or any other person or of causing loss to any person, counterfeits a registered trade mark. A person counterfeits a registered trade mark if, without the consent of the owner of the registered trade mark, the person knowingly: makes a sign that is identical to, or similar to, the registered trade mark so as to be likely to deceive; or falsifies a genuine registered trade mark, whether by alteration, addition, effacement, partial removal, or otherwise.   [back]
  6. Section 124 of the Trade Marks Act 2002 (headed: "Offence to import or sell, etc, goods with falsely applied registered trade mark") provides that every person commits an offence who:imports into New Zealand for the purpose of trade or manufacture any goods to which that person knows a registered trade mark is falsely applied; orsells or exposes for sale any goods to which that person knows a registered trade mark is falsely applied; orhas in the person's possession for the purpose of trade or manufacture any goods to which that person knows a registered trade mark is falsely applied.   [back]