Trade Mark Compliance Costs under Discussion - Associate Minister of Commerce Media Statement

The Government is considering reducing the compliance costs associated with applying for and maintaining trade marks, Associate Commerce Minister Judith Tizard announced today.

The International Trade Mark Treaties discussion paper looks at the feasibility of New Zealand joining a number of international trade mark treaties administered by the World Intellectual Property Organization.

The Treaties considered are the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the "Nice Agreement"); the Trademark Law Treaty; and the Madrid Protocol Relating to the Madrid Agreement (the "Madrid Protocol").

Judith Tizard says New Zealand's economic welfare is directly tied to the country's successful participation in the global economy.

"New Zealand's economic transformation depends on us becoming a country which produces high value goods and services based on new ideas and innovation. We want to see kiwi ingenuity protected in other jurisdictions in an efficient and effective way.'"

"Treaties like the Madrid Protocol are specifically designed to remove trade barriers and reduce the transaction costs for business wanting to trade and invest overseas, and this is why this government is giving consideration to these treaties."

The Madrid Protocol provides an international regime for the registration of trade marks, which would enable New Zealand businesses to file one application directly with the Intellectual Property Office of New Zealand (IPONZ) and designate one or more overseas countries where protection is sought. Currently New Zealand businesses need to submit separate applications to register a trade mark in each country where protection is required.

The Nice Agreement provides an international classification system for trade mark goods and services called the Nice classification. While IPONZ uses the Nice classification in the registration of trade marks, without accession to the Nice Agreement it is unable to participate in the regular reviews of the Nice classification system, which would ensure the classification systems meet the needs of New Zealand businesses.

The Trademark Law Treaty aims to make national trade mark registration systems more user-friendly through the simplification and international harmonisation of trade mark registration procedures.

The discussion paper also includes a general review of the provisions under sections 83 to 87 of the Trade Marks Act 2002 for registering a person as a licensee of a registered trade mark.

In addition, the paper considers the validity of a provision under section 81. The provision allows for a request to be made to the Commissioner of Trade Marks to certify whether an assignment of a trade mark registration would be likely to deceive or confuse. This may be redundant in light of changes introduced into the Trade Marks Act 2002.

"As a first step in the public consultation process, I would like to encourage anyone with an interest in trade marks or international trade to make submissions on matters discussed in the paper," says Judith Tizard.

Email submissions can be sent to: trademarks@med.govt.nz. Hard copies of email submission are not required.

Send hard copy submissions to:

International Trade Mark Treaties Review
Attention: George Wardle
Ministry of Economic Development
PO Box 1473
WELLINGTON

The closing date for submissions on the discussion paper is Monday, 24 April 2006.

Links

• International Trade Mark Treaties: A Discussion Paper (8 March 2006)

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