1. Introduction
1. This discussion paper considers whether New Zealand should accede to a number of multilateral trade mark treaties administered by the World Intellectual Property Organization (WIPO). The treaties considered are:
- the Madrid Protocol Relating to the Madrid Agreement;
- the Trademark Law Treaty; and
- the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks
2. As part of the discussion on the Trademark Law Treaty, the discussion paper considers the provisions on the registration of a person as a licensee of a registered trade mark under the Trade Marks Act 2002 ("the Trade Marks Act") more generally. The paper also considers changes to section 81 of the Trade Marks Act, which provides that a person may request the Commissioner of Trade Marks to provide a certificate that states whether or not a proposed assignment or transmission of a trade mark is likely to deceive or confuse.
Why Is Accession to These Treaties Being Considered?
3. The Growth and Innovation Framework set outs the government's approach to achieving the goal of growing an inclusive and innovative economy for the benefit of New Zealanders. The key to sustained improvement in New Zealand's economic growth is productivity. Businesses drive growth by seeking out market opportunities and developing new and innovative products.
4. The small size of the New Zealand domestic economy means that New Zealanders' economic welfare is directly tied to our successful participation in the global economy. Our growth is dependent on the breadth and depth of our international connections. But there are a number of barriers to developing deeper, richer international connections. These include institutional, legal and regulatory differences between countries that create costs for businesses. The government is able to take steps to remove trade barriers and reduce the transaction costs for New Zealand business wanting to trade and invest overseas. At the same time, the government can work to make New Zealand attractive to the rest of the world as a location to do business. There are several broad dimensions to this, including:
- unilaterally and bilaterally reducing barriers to trade and aligning New Zealand's rules and institutions with those of key players internationally; and
- working in international fora to influence the policies and regulations of other countries and international institutions in favour of New Zealand's interests.
5. Over the last six years there have been significant international developments in the area of trade marks. Our leading trading partners, including Australia, Japan, the United States and the European Community have joined the Madrid Protocol Relating to the Madrid Agreement, which provides the Madrid system for the international registration of trade marks. In addition, the World Intellectual Property Organization ("WIPO") has been developing a number of amendments to the Trademark Law Treaty, another treaty which our leading trade partners have joined.
6. It is important therefore to ensure that, if it is appropriate to New Zealand's circumstances, the legislation and regulations governing trade mark registration in New Zealand are aligned with those of our leading trade partners. This will help:
- Reduce business transaction and compliance costs;
- Create increased legal certainty for business;
- Increase the credibility of New Zealand's trade marks regime, thereby creating an environment conducive to both foreign and domestic business investment; and
- Reduce barriers to market entry.
The Trade Mark Registration System
What Is a Trade Mark?
7. A trade mark is a unique identifier (such as a word, brand, logo, colour, slogan, three-dimensional shape or even a sound) that enables a business to easily distinguish its goods and services from those supplied by other traders. A trade mark is therefore a "badge" of trade origin. It is used as a marketing tool so that consumers can recognise the product of a particular trader. It is also used to guarantee quality to the general public, thereby creating a sense of reliability for customers about the source and quality of the goods or services over repeated purchases.
8. The Trade Marks Act defines a trade mark as any sign capable of being represented graphically and of distinguishing the goods or services of one person from those of another. Under section 5 a sign is defined as including a brand, colour, device, letter, name, numeral, shape, signature, smell, taste, ticket or word, and any combination of signs. The Intellectual Property Office of New Zealand ("IPONZ") maintains the register of trade marks established under the Trade Marks Act.
Why Should Trade Marks Be Protected?
9. Trade marks and trade mark protection facilitate the provision of consumer information. Trade marks reduce the cost to consumers by conveying information on the source and quality of a given product or service and, therefore, reduce the time the buyer needs to spend on gathering information on which to make a sound purchase decision. They also enable businesses to reduce their costs in relaying that information to consumers. In order for these benefits to be realised, the quality of the trade marked goods or services must be consistent over time and across consumers.
10. Protection of trade marks also encourages businesses to invest in quality. In the absence of legal protection of trade marks, low quality firms and counterfeiters would seek to increase their sales volumes by passing their goods or services off as those of well known quality producers. Such action by low quality firms and counterfeiters would undermine the value of the affected trade mark, due to resulting quality inconsistencies, and could discourage business from investing in quality.
11. These benefits are of even more relevance in the global market, where producers and consumers are separated by broad distribution channels. Hence, trade marks are beneficial for both consumers and producers, and promote domestic and international trade.
International Obligations
12. New Zealand is a party to the World Trade Organisation's ("WTO") Agreement on Trade Related Aspects of Intellectual Property ("TRIPS"), which requires Members to have a trade mark registration system and provide minimum levels of protection for trade marks. New Zealand is also party to the Paris Convention for the Protection of Industrial Property, which is administered by World Intellectual Property Organization ("WIPO"). This was the first major multilateral treaty designed to help the people of one country obtain protection in other countries for their intellectual creations in the form of industrial property rights.
13. New Zealand has signed a Memorandum of Understanding with Australia on Business Law Co-ordination. This recognises that co-ordination of business law may help to minimise impediments to trans-Tasman business activity. The work programme includes exploring the potential for more closely co-ordinating the granting and recognition of registered intellectual property rights.
WIPO Trade Mark Treaties
14. In addition to administering the Paris Convention for the Protection of Industrial Property, WIPO also administers a number of multilateral treaties specific to trade marks that New Zealand has not joined. These are:
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the "Nice Agreement");
- the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
- the Trademark Law Treaty;
- the Madrid Agreement Concerning the International Registration of Marks (the "Madrid Agreement"); and
- the Madrid Protocol Relating to the Madrid Agreement (the "Madrid Protocol").
15. Part 2 of this discussion paper considers whether New Zealand should join the Madrid Protocol. Part 3 considers New Zealand's accession to the Nice Agreement and, in particular, the matters that would prevent accession. Part 4 of this discussion paper investigates the Trademark Law Treaty, with an emphasis on those provisions under the Trade Marks Act relating to changes of ownership, relief measures for a failure to meet a time limit and registration of licenses.
16. Part 5 of this discussion paper looks at section 81 of the Trade Marks Act, which provides that a person may request the Commissioner of Trade Marks to provide a certificate that states whether or not a proposed assignment or transmission of a trade mark is likely to deceive or confuse, and considers whether this section should be repealed.
17. You are invited to make a written submission on the matters raised in this discussion paper. Questions have been included in each section of this discussion paper to aid in the preparation of your submission and a comprehensive listing of all the questions can be found in Appendix C. Submissions must be received by Monday, 24 April 2006.
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