International Trade Mark Treaties
New Zealand is a party to the World Trade Organisation's ("WTO") Agreement on Trade Related Aspects of Intellectual Property ("TRIPS"), which requires Member States to provide minimum standards concerning the availability, scope and use of intellectual property rights. For example, Member States must have a trade mark registration system and provide minimum levels of protection for trade marks.
New Zealand is also a party to the Paris Convention for the Protection of Industrial Property, which is administered by World Intellectual Property Organization ("WIPO"). This was the first major multilateral treaty designed to help the people of one country obtain protection in other countries for their intellectual creations in the form of industrial property rights.
In addition to administering the Paris Convention for the Protection of Industrial Property, WIPO also administers a number of multilateral treaties specific to trade marks that New Zealand has not joined. These are:
These trade mark treaties are aimed at: making national trade mark registration systems more user-friendly; reducing business transaction and compliance costs associated with registering trade marks and maintaining those registrations; and creating increased legal certainty for businesses registering trade marks. These aims are achieved through the simplification and international harmonisation of procedures. They do not, however, attempt to harmonise substantive trade mark law, such as the grounds upon which registration of a trade mark may be refused.
The Nice Agreement and Vienna Agreement are classification treaties, which create classification systems that organize information about trade marks into indexed, manageable structures for easy retrieval. The Intellectual Property Office of New Zealand ("IPONZ") along another 100 national and regional trade marks office use the Nice Classification provided for under the Nice Agreement. IPONZ also uses a modified version of the Vienna Classification system provided for under the Vienna Agreement, but WIPO records that only around 30 national and regional trade mark offices make use the Vienna Classification.
The Trademark Law Treaty defines internationally agreed basic standards for procedures on the registration of trade marks and the maintenance of such registrations. The Trade Marks Act 2002 and its associated Regulations include many of the standards set out in the Trademark Law Treaty. This treaty was recently reviewed by WIPO and that review resulted in the adoption of the Singapore Treaty at the conclusion of a Diplomatic Conference held in Singapore during March 2006. The Singapore Treaty therefore updates and modernises the standards found in the Trademark Law Treaty, but does not replace it.
The Madrid Agreement and Madrid Protocol both provide a global protection system for trade marks called the Madrid system, and ensure that one international registration or filing will have effect in any of the nominated signatory States. The services provided by WIPO under these treaties simplify and reduce costs associated with making individual trade mark applications or filings in all countries in which protection is sought for a trade mark.
While the Madrid Agreement was concluded in 1891 and more recently amended in 1979, the Madrid Protocol was concluded in 1989. The aim of developing the Madrid Protocol was to modify the Madrid system to make it more flexible and compatible with the domestic legislations of wider range of countries which had not been able to accede to the Madrid Agreement. A key modification for many countries was the introduction of flexible language requirements. The Madrid Agreement requires all documents and communications to be in French, whereas the Madrid Protocol additionally allows English and, more recently, Spanish to be used. The Madrid system provided under the Madrid Protocol is available in 68 countries, including many of New Zealand's leading trade partners. Australia joined the Madrid Protocol in 2001, whilst China and the United Kingdom joined in 1995, South Korea and Singapore in 2000, the United States of America in 2003 and the European Community in 2004.
A project was commenced in 2006 to investigate whether New Zealand should join the Nice Agreement, Singapore Treaty and the Madrid Protocol.
Accession to International Trade Mark Treaties
Project that initially consulted on whether New Zealand should accede to a number of multilateral trade mark treaties administered by WIPO. The decision to accede has been made and is now in the process of being implemented.
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