Executive Summary
2. The attached discussion paper considers whether New Zealand should accede to a number of international multilateral trade mark treaties administered by WIPO. These treaties are the Madrid Protocol Relating to the Madrid Agreement (the "Madrid Protocol"), the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the "Nice Agreement") and the Trademark Law Treaty.
3. The principal objective of these treaties is to reduce the administrative and compliance costs associated with applying for and maintaining trade mark registrations. The Madrid Protocol provides a regime for the international registration of trade marks in any number of Member countries. The Nice Agreement provides an international classification system of goods and services for the purposes of registering trade marks (the "Nice Classification"). New Zealand already uses the Nice Classification, despite not being a party to the Nice Agreement. The Trademark Law Treaty seeks to simplify and harmonise procedures used by national trade mark offices relating to trade mark registrations. The Trade Marks Act 2002 (the "Trade Marks Act") already complies with most of the requirements of this Treaty.
4. Accession to the Madrid Protocol and the Trademark Law Treaty would require some amendments to the Trade Marks Act. The changes would, however, only relate to the procedures for filing trade mark applications and maintaining the trade mark registrations. The treaties do not seek to harmonise substantive trade mark law. Accession would not, therefore, impact on the Government's ability to achieve specific policy objectives in the trade marks area.
5. The attached discussion paper contains a series of questions for businesses, trade marks owners and other interested parties relating to New Zealand's accession to each of the above treaties. In addition, section 4 concerning the Trademark Law Treaty includes a general review of the current licensing provisions under the Trade Marks Act and seeks feedback on whether the licensing provisions should be aligned with the provisions under the Australian Trade Marks Act 1995. The discussion paper also seeks comment on a matter that has arisen since the Trade Marks Act came into force concerning the assignment of trade marks. It appears that the ability of the Commissioner of Trade Marks to certify upon request whether or not that a proposed assignment of trade mark is likely to deceive or confuse may have become redundant.
6. Approval is sought for the release of the attached discussion paper by the Ministry of Economic Development. I intend to report back with recommendations on accession to the three treaties by the middle of July 2006.
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