Trade Mark and Border Protection gets Upgrade
Legitimate New Zealand businesses trading internationally should see long-term benefits when the Trade Marks (International Treaties and Enforcement) Bill becomes law, but counterfeiters certainly will not.
Originally introduced to Parliament by Judith Tizard last September, the Bill passed its first reading in April, and has the support of all parties.
It will allow New Zealand to join international trade mark treaties the Madrid Protocol, the Nice Agreement and the Singapore Treaty, and will boost powers to search and seize counterfeit goods crossing our borders.
Under the Madrid Protocol, New Zealand businesses will be able to include trade mark applications to other Madrid member states with their New Zealand trade mark applications, and Madrid members will be able to do likewise here.
This should lower the costs of basic international trade mark protection for local businesses, however increased overseas applications filed here under Madrid could slow down processing at IPONZ. Unused overseas marks could also clog our Trade Marks Register, restricting branding choices for local businesses.
Joining the Nice Agreement will allow New Zealand to have input into the Nice trade mark classification system, which we use as a non-member. This could be of value for specifying unique indigenous goods and services. Prior to entry, New Zealand’s 1,300 non-complying trade marks will need to be re-registered under Nice.
Ratifying the Singapore Treaty will harmonise our trade mark procedures with internationally accepted standards observed by Treaty members.
The Bill strengthens enforcement powers under anti-counterfeiting and intellectual property legislation, consistent with New Zealand’s international obligations under Article 61 of TRIPS (Agreement on Trade Related Aspects of Intellectual Property Rights).
Customs officers will be given extended powers to seize counterfeit goods at the border, demand information about such goods from persons believed to be importers or their agents, and prosecute for failure to co-operate. They will also be able to apply for and execute search warrants.
Currently intellectual property rights-holders can apply to Customs to lodge border protection notices (a request to detain counterfeit or trade mark infringing goods coming through Customs) for a nominated period while investigations are carried out, and pending civil claims for trade mark or copyright infringement, on payment of a $5,000 security bond.
The bond requirement will be repealed, however Customs will be entitled to suspend enforcement of a border protection notice when its investigation costs are not covered by the applicant.
A specialised MED enforcement team will be created to crack down on the sale of counterfeit goods post-border. It will have limited non-warranted powers to search and seize pirate and counterfeit goods offered for sale in public places, targeting transient operators selling goods in markets or street stalls.
The Bill will also repeal voluntary trade mark license registration and remove all licenses from the Trade Marks Register. Currently only trade mark owners or registered licensees can sue for infringement. This is not considered beneficial to consumers, nor fair on unregistered licensees. In line with Australia, the license agreement will determine whether a licensee can proceed against infringers or lodge a border protection notice. Registered licensees may not welcome the change, as registration can be useful security in negotiating with overseas licensors, however the overall impact in the marketplace here is viewed as minimal.
As well as miscellaneous procedural changes the Bill amends the Copyright Act 1994 to ensure trade marks registrations cannot be used to frustrate legitimate parallel importing.
It is intended that once the Bill has progressed through Parliament it will be split in two, dealing with amendments to the Copyright Act and Trade Marks Act 2002 separately.
By Michael Battersby / Rebecca Collins – First published in Business to Business June 2009 issue, Vol. 18 No.6
