Background
7. In March 2006 Cabinet agreed that the Ministry of Economic Development release a discussion paper, International Trade Mark Treaties, considering whether New Zealand should become party to three treaties administered by the World Intellectual Property Organisation ("WIPO") [CAB Min (06) 7/7 refers]. These were the Madrid Protocol, the Nice Agreement and the then proposed Trademark Law Treaty 2006 (adopted in March 2006 and now referred to as the Singapore Treaty on the Law of Trade Marks). The discussion paper also sought views on the key amendments to the Trade Marks Act and Regulations that would be required if New Zealand was to accede to the treaties.
8. I undertook to report back on submissions in response to the discussion paper with recommendations on becoming party to these three treaties by the middle of July. This is the second of two papers reporting back on submissions received with recommendations on New Zealand's accession thereto.
Madrid Protocol
9. The Madrid Agreement Concerning the International Registration of Marks 1891 (the "Madrid Agreement") provides the Madrid system for the protection of trade marks overseas. The Madrid system is administered by WIPO and enables a trade mark owner to have a trade mark protected in one or more countries by filing one application directly with the local trade mark office and designating one or more overseas countries where the Madrid system is available and where protection is sought. An international application is equivalent to an application for registration of the same trade mark made directly in each of the countries designated by the applicant.
10. The Madrid system also simplifies the subsequent management of trade marks. For example, a change in name or ownership of the registered trade mark may be recorded and have effect in each country designated by the trade mark owner by means of a single application and the payment of one fee. Furthermore, the Madrid system is designed to reduce, and in some case may eliminate, the need for a trade mark owner to employ the services of a trade mark agent in each country where protection is sought.
11. The main advantages for trade mark owners, therefore, consists in the simplicity of international registration provided by the Madrid system and the financial savings made when obtaining and maintaining protection of their trade marks overseas.
12. The Madrid Protocol (see Appendix E for the text of the treaty) introduces a number of improvements to the Madrid system, such as enabling international applications to be filed in English, French or Spanish, rather than only French as prescribed in the Madrid Agreement. A country must become party to the Madrid Agreement, the Madrid Protocol or both, to enable local businesses to use the Madrid system to seek trade mark protection overseas and for overseas business to use the Madrid system to seek local trade mark protection. I have only considered New Zealand's accession to the Madrid Protocol because of the improvements made to the Madrid system under the Madrid Protocol.
13. Sixty-seven countries are parties to the Madrid Protocol, and most of our leading trading partners have taken steps to become party to the Protocol in recent years, including as China (1995), Singapore (2000), Japan (2000), Australia (2001), Republic of Korea (2003), the United States of America (2003) and the European Community (2004). Of the developed countries, only New Zealand and Canada are not yet members of the Madrid Protocol and Canada is currently considering whether it should become a party to the Madrid Protocol.
Nice Agreement
14. The Nice Agreement (see Appendix F for the text of the treaty) provides a classification system for goods and services for the purposes of registering trade marks. The 79 countries that are party to the Nice Agreement must apply the Nice Classification to registered trade marks. Other countries not party to the Nice Agreement are, however, able to use the Nice Classification. WIPO notes that over 100 trade marks offices use the Nice Classification. New Zealand is not party to the Nice Agreement, but the Intellectual Property Office of New Zealand ("IPONZ") has been required to use the Nice Classification since 1953 Its use of the Nice Classification was originally prescribed under the Trade Mark Regulations 1953 and this requirement for use was carried over into the Trade Marks Regulations 2003.
15. The main advantage to New Zealand from becoming a party to the Nice Agreement would be to allow New Zealand (in practice, officials from IPONZ) to participate in and influence the future development of the Nice Classification so that it best meets the needs of IPONZ and New Zealand businesses.
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