Appendix A: National Interest Analysis - Singapore Treaty on the Law of Trademarks
Date of Proposed Binding Treaty Action
1. The Singapore Treaty on the Law of Trademarks ("the Singapore Treaty") was adopted at a Diplomatic Conference held in Singapore in March 2006.
2. The Singapore Treaty will enter into force three months after ten States who are members of the World Intellectual Property Organization ("WIPO") or intergovernmental organisations (where all the Member States of the intergovernmental organisation are members of WIPO) have deposited their instruments of ratification or accession.
3. It is proposed that New Zealand sign the Singapore Treaty by March 2007 and ratify by December 2008.
Reasons for New Zealand to Become Party to the Treaty
4. While the World Trade Organisation ("WTO") Agreement on Trade Related Aspects of Intellectual Property ("TRIPS") sets the minimum standards of protection that WTO Members must provide for registered trade marks, it is silent on trade mark registration procedures. Each country has, therefore, developed its own unique trade marks registration procedures.
5. The Singapore Treaty defines a set of internationally agreed basic standards and rules regarding trade mark registration procedures. The aims of the Singapore Treaty are to reduce business compliance costs and to make national trade mark registration systems more user-friendly for applicants and the owners of registered trade marks. The Singapore Treaty endeavours to achieve these aims through the simplification and international harmonisation of national registration procedures.
6. While countries could adopt the standards and rules specified in the Singapore Treaty without becoming party to it, ratification of the Treaty would contribute to the realisation of the aims of the Treaty and 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.
Advantages and Disadvantages to New Zealand from the Treaty Entering into Force
7. As the Singapore Treaty was adopted very recently, it has not yet entered into force, although 43 countries have signed, including a number of New Zealand's trading partners.
8. The advantages of the Singapore Treaty entering into force are that it would contribute to both the simplification and harmonisation of trade mark registration procedures world-wide. This would make national trade mark registration systems more user-friendly and reduce business compliance costs for all businesses seeking to protect their trade marks in New Zealand and in other countries that ratify or accede to that Treaty.
9. A further advantage is that the Singapore Treaty provides for meetings of an Assembly of Contracting Parties to the Singapore Treaty. The Assembly is able to develop the text of the Singapore Treaty to take account of technological advances, such as, the creation of new types of trade marks and means of communication. This provision will ensure that the standards and rules prescribed in the Singapore Treaty stay up-to-date and relevant.
10. Being party to the Treaty would reinforce New Zealand's commitment to provide an efficient and effective trade mark registration regime that is consistent with international best practise.
11. There are no perceived disadvantages to New Zealand arising from ratification of the Singapore Treaty.
Obligations
12. The Singapore Treaty defines a mixture of agreed mandatory international standards and rules for trade mark registration procedures. These procedures are intended to apply broadly to any signs that can be registered as trade marks under national law, irrespective of whether the trade mark covers goods or services or both. There is no obligation on state parties to apply the standards and rules to collective trade marks or certification trade marks.
13. The majority of the provisions of the Singapore Treaty relate to the procedures of trade mark offices of contracting parties. The standards and rules are constructed to make it clear what a trade mark office can and cannot require from an applicant or owner of a trade mark.
14. These standards and rules cover:
- the maximum information or elements required in or accompanying an application for registration of a trade mark;
- address for service requirements and representation by trade mark agents;
- filing dates;
- the use of the Nice Classification to specify the classes of goods and services for which a trade mark is registered and used, and provision for applications and registrations across a number of classes;
- the division of an application or registration into several applications or registrations;
- communications with a trade mark office;
- recording changes in the ownership of a trade mark and name and address details;
- correcting mistakes in applications and registrations;
- provision for renewal of trade marks after a ten year period;
- relief measures where time limits are not complied with;
- the ability for applicants to make observations where a trade mark office intends to refuse a request or application;
- complying with the obligations and requirements of Paris Convention for the Protection of Industrial Property and applying those obligations and requirements to the registration of trade marks for services; and
- registration of trade mark licenses.
15. Although the provisions of the Singapore Treaty do permit those ratifying or acceding to it to declare a number of allowed reservations, it is not proposed that New Zealand would declare any such reservations.
Economic, Social, Cultural and Environmental Effects
16. The Trade Marks Act 2002 ("the Trade Marks Act") is already consistent with a substantial number of standards and rules of the Singapore Treaty, so it is unlikely that any measurable economic effects will arise from ratification.
17. As the Singapore Treaty only covers trade mark registration procedures, and does not attempt to harmonise substantive trade mark law, there are no perceived social, cultural or environmental effects arising from its ratification.
18. Ratification will also not limit the government's ability to achieve specific policy objectives in the area of trade marks, such as responding to Treaty of Waitangi claims. Furthermore, ratification will not have any adverse effects on Māori interests or be inconsistent with our human rights obligations.
Costs
Government
19. No immediate costs to government would arise from New Zealand becoming a party to the Singapore Treaty. This is because member states of WIPO (including New Zealand) pay one membership fee irrespective of the number of WIPO treaties to which they are party.
20. Over the longer term there would be some minor resource implications for government, and in particular for the Ministry of Economic Development. As a party to the Singapore Treaty, New Zealand would be signalling its intention to participate in the work of the Assembly including attending meetings and contributing to reporting and information-gathering processes. Attendance at the Assembly would not itself incur any additional costs as the Assembly would meet annually at the same time and in the same place as the General Assembly of WIPO, and New Zealand is already funded by WIPO to attend the General Assembly. Attendance at any extra-ordinary Assembly meetings or working group meetings would be met out of existing Ministry of Economic Development appropriations.
Intellectual Property Office of New Zealand
21. IPONZ is fully third party funded and there would be no financial implications for the government arising from amendments to the Trade Marks Act.
Businesses
22. There are unlikely to be any direct costs to businesses arising from ratifying the Singapore Treaty. There may be some compliance costs for businesses that choose to take advantage of new Singapore Treaty provisions; however, the decision to do so would be voluntary for businesses.
23. As other member states of WIPO and intergovernmental organisations ratify or accede to the Singapore Treaty (and, therefore, simplify and harmonise trade mark registration procedures with those in New Zealand), there could be expected to be a minor cost savings to New Zealand trade mark owners seeking overseas registration through a reduction in overseas compliance costs.
Consumers/Economy
24. Ratification to the Treaty is not expected to result in any costs for consumers or for the economy as a whole.
Future Protocols
25. While it is unlikely that any subsequent protocols (or other amendments) will be made to the text of the Singapore Treaty, there is specific provision in the Treaty for the Articles to be amended at a diplomatic conference. The decision on whether to convene a diplomatic conference is taken by the Assembly of contracting parties. Should New Zealand become party to the Singapore Treaty, it would be have the right to be represented on the Assembly.
Implementation
26. The Singapore Treaty would be implemented under the Trade Marks Act and its associated regulations. Prior to ratifying the Singapore Treaty this legislation would require amendment to bring New Zealand's trade mark registration procedures into line with all the standards and rules specified in the Treaty. As noted above, however, the Trade Marks Act is already consistent with a substantial number of provisions of the Treaty, so only a minimal number of amendments will be required. The proposed Trade Marks (International Treaties) Amendment Bill has been categorised as priority level 5 (drafting instructions to be given to Parliamentary Counsel Office) on the government's 2006 legislative programme.
Consultation
27. A discussion paper entitled International Trade Mark Treaties was published on 8 March 2006. Submissions were sought from businesses, trade mark agents, patent attorneys, law practitioners and interested parties on whether New Zealand should joining the Singapore Treaty along with key amendments to the Trade Marks Act and associated regulations that would be required to ratify the Treaty.
28. Six submissions were received that commented on the Singapore Treaty. Submitters generally supported New Zealand becoming a party to the Singapore Treaty as this would help to align New Zealand's trade mark regime more closely with those of Australia and other leading trading partners. Submissions also generally considered that becoming a party to the Singapore Treaty would result in some minor decreases in compliance costs for users of the system, but would not have any significant economic or other impacts.
29. The Ministry of Consumer Affairs, the Ministry for Culture and Heritage, the New Zealand Customs Service, the Ministry of Foreign Affairs and Trade, the Ministry of Justice, Te Puni Kōkiri, and the Treasury were consulted on and concur with the proposal for New Zealand to become party to the Singapore Treaty. In addition, the Department of the Prime Minister and Cabinet has been informed.
Withdrawal or Denunciation
30. Any party to the Singapore Treaty may withdraw by giving twelve months notice to the depository.
31. Any application pending or any trade mark registered at the time of the expiration of the twelve month period will not be affected, provided that the withdrawing party then discontinues applying the provisions of the Singapore Treaty to any registration, as from the date on which that registration is due for renewal.
Lead Agency: Ministry of Economic Development
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