Comment
Submissions on the Discussion Paper
16. Nine submissions from eight submitters were received. Five submissions were from New Zealand patent attorneys and law practitioners, three were from Australia (two from an Australian trade mark attorney and the other from an Australian business) and one from the International Trademarks Association ("INTA") based in New York. There was general support for New Zealand's becoming party to all three treaties considered in the discussion paper.
17. Six submissions commented specifically on New Zealand's becoming party to the Singapore Treaty. All these submissions supported becoming party on the basis that it would assist to bring New Zealand's trade mark regime in line with Australia and our other leading trading partners. Submissions also generally considered that becoming party would result in some minor decreases in compliance costs for users of the trade mark system, but overall becoming party would not have any significant economic or other impacts.
Becoming Party to the Singapore Treaty
18. Analysis undertaken by the Ministry of Economic Development, supported by submissions from stakeholders, indicates that it would be in New Zealand's interests to become party to the Singapore Treaty. A National Interest Analysis is attached as Appendix A. Becoming party to the Singapore Treaty would contribute to the realisation of the aims of the Treaty and would build on measures already taken in the Trade Marks Act to align trade mark registration procedures with our key trading partners, and in particular, with Australia.
19. Alignment would also contribute to the development of a more seamless trans-Tasman business environment, or "single economic market" and towards fulfilling the mandate in the 2000 Closer Economic Relations Memorandum of Understanding on the Co-ordination of Business Law that the two countries explore "the potential for more closely co-ordinating the granting and recognition of registered intellectual property rights."
20. For the above reasons, I therefore recommend that New Zealand become party to the Singapore Treaty.
Process for Becoming Party to the Singapore Treaty
21. The Singapore Treaty remains open for signature until March 2007. Being amongst early signatories provides an opportunity for New Zealand to send a clear signal to the international community of New Zealand's commitment to provide an efficient and effective trade mark registration regime that is consistent with international best practise. I propose that New Zealand sign the Treaty and subsequently ratify it, subject to a satisfactory Parliamentary treaty examination process, and that drafting instructions be issued to the Parliamentary Counsel Office ("PCO") regarding the required amendments to the Trade Marks Act to give effect to and implement the Singapore Treaty.
22. A Bill to amend the Trade Marks Act has been given a priority level 5 on the legislative programme (drafting instructions to PCO this calendar year). Once the amending legislation has been implemented I recommend that New Zealand deposit its Instrument of Ratification with WIPO. I anticipate that this would occur before December 2008. As mentioned above, amendment to the Trade Marks Act would be necessary to enable New Zealand to become party to the Singapore Treaty.
Effect of Becoming Party to the Singapore Treaty
23. While the Trade Marks Act already incorporates many of the standards and rules prescribed by the Singapore Treaty, there are a number of provisions that do not currently comply. New Zealand is, therefore, unable to ratify the Singapore Treaty until suitable amendments are made to the Trade Marks Act and Regulations.
24. Significant differences between the Trade Marks Act and the Singapore Treaty include: registration of changes in ownership of trade marks; registration of a licensee; and division of a trade mark registration. These are discussed in detail below.
Change of Ownership
25. Under section 82 of the Trade Marks Act only the person who has acquired ownership of a trade mark can apply to the Commissioner of Trade Marks ("the Commissioner") to register the change of ownership. The Singapore Treaty prescribes that a trade marks office is required to accept an application to register a change of owner from either the original owner or the new owner.
26. Submissions on the discussion paper broadly supported the approach to change of ownership required by the Singapore Treaty. I, therefore, recommend that the Trade Marks Act be amended to enable both the original owner and the new owner to apply to register a change of ownership.
Registration of a Person as a Licensee
27. Registration of a licensee is voluntary under the Trade Marks Act. If a licensee is not registered, the licensee cannot take action against infringement of the registered trade mark or cannot lodge a border protection notice with the New Zealand Customs Service to prevent the importation of counterfeit goods. Under the Singapore Treaty the matter of whether a licensee should be registered is left to national law, but if the national law does provide for it, certain rules concerning registration will apply.
28. The discussion paper sought comment on whether the requirement for registration of a person as a licensee under the Trade Marks Act should be aligned with Australia. In Australia, no specific provision is made for the registration of a person as a licensee. A licensee, however, may be registered as a person claiming an interest or right in a trade mark. Registration is not a prerequisite for a licensee to be able to take action against infringement of the trade mark or to lodge a border protection notice with Customs. Whether a licensee can take such action is determined first by the licence agreement between the trade mark owner and the licensee.
29. Submissions generally endorsed measures that would align our Act with Australia, as the Australian provisions give unregistered licensees more capacity to protect their interests.
30. A submission from a New Zealand patent attorney firm, AJ Park, considered that there was no need to register licensees and that existing registrations should be removed from the register. The submission also noted that the voluntary registration of licensees often causes additional and unnecessary costs and confusion, especially for trade mark owners. Officials agree with this submission. If there are to be no practical effects arising from registering a licensee, the continued provision for licensees to be registered, albeit voluntarily, would only create unnecessary costs and confusion.
31. I recommend, therefore, that the relevant sections of the Trade Marks Act be repealed so that a person cannot be registered as a licensee. I also recommend that the provisions governing the actions of licensees in respect of infringement and border protection measures be aligned with the Australian Trade Marks Act 1995.
Division of Registrations
32. One issue not explicitly addressed in the discussion paper, but which nonetheless requires amendment in order to align with the Singapore Treaty, relates to the division of a registered trade mark into two or more registrations. At present the Trade Marks Act only provides for the applicant for a trade mark to be able to divide his or her application into two or more applications. The Singapore Treaty, however, requires that provision be made for both the division of trade mark applications and trade mark registrations.
33. While there would be business compliance costs associated with making a request to divide a registration into two more registrations, the decision to divide a registration would be voluntary and initiated by the trade mark owner. It is not anticipated that the trade mark owner would pay a fee for such a request. IPONZ would also face costs in processing applications to divide trade mark registrations, along with administering and monitoring a greater number of trade marks on the register; however, these costs would be recovered through the additional renewal fees payable by the trade mark owner for each additional registration that is renewed.
34. I recommend that the Trade Marks Act be amended to enable procedures, requirements and other matters to be prescribed for the division of a trade mark registration into several registrations.
Section 81 Trade Marks Act
35. The discussion paper also sought comment on a matter that has arisen since the Trade Marks Act came into force in August 2003. Under section 81 of the Act a person may request that the Commissioner of Trade Marks certify whether or not a proposed assignment of trade mark is likely to deceive or confuse.
36. Submissions were sought on whether section 81 (which has only been used once despite over 15,000 assignments having being registered by IPONZ since August 2003) is redundant and should, therefore, be repealed.
37. There was agreement from submitters that section 81 was of no value or benefit and was, therefore, redundant and could be repealed. I recommend, therefore, that this section be repealed from the Trade Marks Act.
Minor, Consequential and Regulation Amendments
38. A number of more minor and consequential amendments are also likely to be required to the Trade Marks Act and Regulations to enable New Zealand to ratify the Singapore Treaty.
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