Background
7. A trade mark is a unique identifier (word, brand, logo, colour, slogan, three-dimensional shape and sometimes even a sound or smell) that enables a business easily to distinguish its goods and services from those supplied by other traders. It is used as a marketing tool so that consumers can recognise the product (and the associated product quality) of a particular trader.
8. Trade marks enable the public to recognise that all goods or services with a particular trade mark come from the same origin, thereby providing low-cost information to consumers and creating incentives for business to invest in quality products and services. The use of trade marks is protected under the Fair Trading Act 1987, the common law tort of passing off and through registration under the Trade Marks Act.
9. New Zealand is a party to both the Paris Convention for the Protection of Industrial Property administered by the World Intellectual Property Organisation ("WIPO") and the World Trade Organisation's ("WTO") Agreement on Trade Related Aspects of Intellectual Property ("TRIPS") requiring Member States to have a trade mark registration system and afford minimum levels of protection to registered trade marks. While TRIPS sets the minimum standards of protection that WTO Member States must provide for registered trade marks, it is silent on standards and rules for trade mark registration procedures. Each country has, therefore, developed its own unique trade mark registration procedures.
10. The objectives of WIPO include the promotion the protection of intellectual property throughout the world through cooperation among States and, where appropriate, in collaboration with any other international organization; and to ensure administrative cooperation. Consistent with these objectives WIPO has developed a number of multilateral trade mark treaties to which New Zealand has not become a party, that aim to: reduce business transaction and compliance costs associated with registering trade marks and maintaining those registrations; and to create increased legal certainty for businesses registering trade marks. These treaties include:
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("the Nice Agreement");
- the Madrid Agreement Concerning the International Registration of Marks (the "Madrid Agreement");
- the Madrid Protocol Relating to the Madrid Agreement (the "Madrid Protocol"); and
- the Trademark Law Treaty 1994;
- the Singapore Treaty on the Law of Trademarks ("the Singapore Treaty").
11. In recent years most of our key trading partners have become party to the Trademark Law Treaty (now overtaken by the Singapore Treaty), the Madrid Protocol and the Nice Agreement or are taking steps to become party to these treaties. In light of these developments, in March 2006 Cabinet agreed that the Ministry of Economic Development release a discussion document, International Trade Mark Treaties, considering whether New Zealand should become party to the Madrid Protocol, the Nice Agreement and the WIPO proposed Trademark Law Treaty 2006 (now known as the Singapore Treaty on the Law of Trademarks or "Singapore Treaty") [CAB Min (06) 7/7 refers]. The discussion paper contained a series of questions for businesses, trade mark owners and other interested parties, relating to New Zealand becoming party to the treaties and key amendments that would be necessary to the Trade Marks Act and Regulations.
12. The text of the Singapore Treaty is attached as Appendix C. The aim of the Singapore Treaty is to make national trade mark registration systems more user-friendly and to reduce business compliance costs for trade mark owners. The Singapore Treaty endeavours to achieve these aims through the simplification and international harmonisation of national registration procedures.
13. The majority of the standards and rules in the Singapore Treaty relate to the procedures of trade mark offices and, in particular, are constructed to make it clear what a trade mark office can and cannot require from applicants.
14. The Trade Marks Act already complies with most of the requirements of the Singapore Treaty. Becoming party would, however, require some amendments to the Trade Marks Act and Regulations. The Singapore Treaty is process-related and does not seek to harmonise substantive trade mark law. Becoming a party to it would not, therefore, impact on the government's ability to achieve specific policy objectives in the trade marks area, such as responding to Treaty of Waitangi claims.
15. I undertook to report back by July 2006 on submissions received in response to the discussion paper and with recommendations on whether New Zealand should become party to the three treaties. This paper considers accession to the Singapore Treaty, whilst the accompanying paper considers accession to the Madrid Protocol and the Nice Agreement.
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