3. The Nice Agreement
Background
55. The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks [link to WIPO website] (the "Nice Agreement") provides an international classification of goods and services (the "Nice Classification") for the purposes of registering trade marks. The countries party to the Nice Agreement are required to adopt and apply the Nice Classification.
56. The trade mark offices of 100 countries, three organisations and IB of WIPO use the Nice Classification, whilst 72 countries are party to the Nice Agreement. The Nice Classification has therefore been adopted and applied by countries and organisations who have not joined the Nice Agreement. While New Zealand has not acceded to the Nice Agreement, the use of the Nice Classification is prescribed under the Regulations. Furthermore, the use of the Nice Classification is also mandatory under the Madrid Protocol and a requirement of the Trademark Law Treaty.
57. Use of the Nice Classification by national trade mark 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. In addition, the Nice Classification exists in several languages, saving 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 trade mark.
58. The Nice Classification is regularly reviewed by WIPO, with a new version being published every five years.
Issues to Consider Concerning Accession to the Nice Agreement
59. There appear to be several advantageous for New Zealand in join the Nice Agreement. Membership would formalise New Zealand's use of the Nice Classification. By acceding to the Nice Agreement, New Zealand would be able to participate in the future review of the Nice Classification. The benefits of this are that the New Zealand (and in particular IPONZ) would be able to propose changes to the Nice Classification to meet the needs of New Zealand trade marks owners, but also collaborate with other countries to ensure inconsistency within the Nice Classification are adequately addressed.
60. Accession to the Nice Agreement would require New Zealand to apply each new version of the Nice Classification published by WIPO, but this is not likely to be an issue as New Zealand has a history of adopting new versions of the Nice Classification when they are published.
61. While IPONZ has been using the Nice Classification for many years, there are around 1,500 registered trade marks registered before 11 December 1941 for goods classified under the Third Schedule of the Trade Marks Regulations 1954 ("Third Schedule registrations"). The classifications of the goods in the specifications of these Third Schedule registrations are not compatible with the Nice Classification. Before New Zealand could accede to the Nice Agreement, these Third Schedule registrations would therefore need their specifications converted into the Nice Classification.
62. Under regulation 139 of the Regulations the owners of these Third Schedule registrations may voluntarily request their registrations to be converted into the Nice Classification. There appear to be few, if any, incentives for these holders to convert their Third Schedule registrations. For some holders of Third Schedule registrations with very broad specifications conversion may even result in additional renewal costs, if the trade mark owner was required divide his or her original registration into several classes of the Nice Classification.
63. Allowing trade mark registrations to remain classified under the Third Schedule, however, results in on-going administrative costs to IPONZ to maintain and make available the register for searching under several classification systems. These ongoing administrative costs are passed onto all trade mark owners through the registration renewal fees. In addition, there are also costs to third parties searching the trade mark register, as their searches have to be conducted across different classification systems. These costs could be eliminated by converting all Third Schedule registrations into the Nice Classification.
Implementation
64. On the face of it no legislative changes would be required to enable New Zealand to join the Nice Agreement, since the principal obligation of using Nice Classification for registered trade marks is already prescribed by the Regulations. As noted above, however, before New Zealand could join the Nice Agreement, some 1,500 trade mark registrations would need their specifications to be converted into the Nice Classification. It may be necessary to amend the Regulations to allow the Commissioner to initiate the conversion process for these trade mark registrations.
Questions
5. How important is it for New Zealand to be part of and to be able to contribute to any review and development of the Nice Classification at WIPO? Should New Zealand join the Nice Agreement?
6. Given that use of the Nice Agreement is mandated by the Madrid Protocol, would the case for New Zealand joining the Nice Agreement be any greater if New Zealand joined the Madrid Protocol? If so, in what way?
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