Executive Summary
2. This is the second of two papers reporting back on submissions received in response to the government's discussion paper International Trade Mark Treaties. The first paper International Trade Mark Treaties Paper A: Accession to the Singapore Treaty recommends signature and ratification of the Singapore Treaty on Law of Trademarks (the "Singapore Treaty"). This paper recommends New Zealand accede to both the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989 ("the Madrid Protocol") and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("the Nice Agreement").
3. The Madrid Protocol provides a simplified system for the protection of trade marks overseas called the "Madrid system". The Madrid system enables a business to have a trade mark protected in multiple countries party to the Madrid Protocol through one application (an "international application") that designates one or more overseas countries where the Madrid system is available and where protection is sought.
4. The Nice Agreement provides a classification system for goods and services for the purposes of registering trade marks ("the Nice Classification"). Those countries that are party to the Nice Agreement must apply the Nice Classification to registered trade marks, although those countries not party may apply still the Nice Classification. New Zealand is not party to the Nice Agreement, but use of the Nice Classification has been mandated by our trade marks law for many years. No significant changes to New Zealand's trade mark law are required.
5. These 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, such as responding to Treaty of Waitangi claims.
6. Accession to the Madrid Protocol will require amendment to the Trade Marks Act 2002 ("the Trade Marks Act") and the Trade Mark Regulations 2003 ("the Trade Mark Regulations") to provide for the Madrid system to have effect in New Zealand. The changes would, however, only relate to the procedures for filing trade mark applications and maintaining the trade mark registrations under the Madrid system. Approximately 1,600 Third Schedule trade marks registrations are not classified under the Nice Classification. They were registered before use of the Nice Classification was mandated in 1953 and some date back to the beginning of the 20th century. To facilitate their conversion, an amendment to the Regulations is needed to allow the Commissioner of Trade Marks to effect their conversion in a timely manner.
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