Appendix C: Discussion Questions
Madrid Protocol
1. What are the benefits for business of New Zealand joining the Madrid Protocol? Please quantify if possible. How might the benefits for a New Zealand business differ when compared to foreign business?
2. What is the likelihood of a business using the Madrid system, if it was available in New Zealand?
3. Are there any reasons why New Zealand should not join the Madrid Protocol?
4. What social or environmental impacts may arise from joining the Madrid Protocol?
Nice Agreement
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?
7. If New Zealand wanted to join the Nice Agreement, how could the conversion of the specifications of the 1,500 Third Schedule registrations into the Nice Classification be best progressed in a time manner? For example, should the Regulations allow the Commissioner of Trade Marks to initiate the process of conversion?
Trademark Law Treaty
Change of Ownership
8. Should the change of ownership provisions under the Trade Marks Act and the Regulations be aligned with the approach specified in the TLT 2006? If so, what would be the benefits or costs of doing so?
9. How would adopting the change of ownership provisions specified in the TLT 2006 change the compliance costs associated with registering a change of ownership under the Trade Marks Act?
10. Under what circumstances, if any, should the original owner be permitted to apply to the Commissioner to register a change of ownership of a trade mark?
11. What proof of title to a trade mark, if any, should be provided to the Commissioner with an application to register a change of ownership of the trade mark? Should such proof differ depending on whether the new owner or the previous owner applied to change the ownership of the trade mark and, if so, in what way?
12. Where a trade mark is registered in the name of several co-owners and one of the co-owners changes, to what extent, if at all, should the Commissioner have regard to the interests of the existing co-owners?
13. Is it necessary for the Commissioner to know the effective date that the change of ownership took place when considering a request to change the ownership of a trade mark? Should this date be available on the trade marks register?
14. To what extent, if at all, should the Commissioner have regard to the interests of any licensee when an application is made to change the ownership of a trade mark?
Relief Measures in Case of Failure to Comply with Time Limits
15. Should the requirements for requesting and granting an extension of time under regulation 32 be aligned with the requirements prescribed by Article 14 of the TLT 2006? What would be the likely costs and benefits for trade mark owners and third parties of adopting the extension of time regime required by Article 14(2) of TLT 2006?
16. If New Zealand were to adopt the requirements prescribed by Article 14 for extensions of time, which of those exemptions identified in Rule 9(4) of the TLT 2006 (see paragraph 85 above) should apply under the Trade Marks Act and why?
17. Under what circumstances would maintaining the prohibitions under Regulations 43 and 62 against a request for an extension of time being made after the expiry of the time limit concerned be justified?
18. If a person has already requested and been granted an extension of time for completing an outstanding action, under what circumstances, if any, should that person be permitted to request further extensions of time to complete the outstanding action?
19. Instead of the Trade Marks Act providing for extensions for time, should provision be made for other forms of relief measures to be provided in accordance with Article 14, such as continued processing or reinstatement of rights? If so, under what circumstances should these other forms of relief measure be made available?
20. Should a fee be paid when a request for an extension of time is made to recover the Commissioner's administrative costs of processing the request?
Recordal of Trade Mark Licences
21. Should New Zealand's licensing regime be amended as proposed above? What concerns would you have if the proposed licensing regime was adopted under the Trade Marks Act? How might those concerns be addressed?
22. What would be the benefits of aligning the licensing provisions of the Trade Marks Act with those under the Australian Trade Marks Act 1995?
23. What supporting documents should either the owner or the licensee, if any, be required provide to either have a licence voluntarily registered on the register or to alter or cancel an existing registration of a licence?
24. What role, if any, should the Commissioner of Trade Marks play in disputes between a trade mark owner and a person voluntarily registered as a licensee over the amendment or cancellation of that person's registration as a licensee?
25. Should the provisions under section 87(2)(c) of the Trade Marks Act allowing third parties to apply to cancel the registration of a licence be repealed? If not, why not?
Accession to the TLT 2006
26. If the Trade Marks Act were to be brought into conformance with the standards and requirements of the TLT 2006, should New Zealand accede to the TLT 2006?
27. Under what circumstances would it not be in New Zealand's interests to accede to the TLT 2006?
28. What would be the likely economic impact for New Zealand from acceding to the TLT 2006?
29. In what way would trade mark owners be expected to benefit from accession?
30. What social or environmental impacts may arise from joining the Madrid Protocol?
Other Issues
Section 81 - Commissioner's Certificate That Relates to Certain Assignments or Transmissions
31. Should section 81 providing for the Commissioner to issue a certificate of validity be repealed?
32. What would be the benefit of retaining section 81?
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