The New Zealand Trade Marks Amendment Bill 2008 (“the Bill”), introduced into New Zealand’s Parliament 3 years ago as the Trade Marks (International Treaties and Enforcement) Amendment Bill 2008, was passed after its second reading on 8 September 2011. The amendments introduced by this Bill include bringing New Zealand further in line with international trade mark practice, increase the enforcement powers of the New Zealand Customs Service and the National Enforcement Unit, and clarify issues relating to parallel importation.

International Treaties

The Bill amends the current New Zealand Trade Marks Act 2002 (“the Act”) to facilitate New Zealand becoming a party to various international agreements, in particular the Madrid Protocol and the Nice Agreement, as well as the Singapore Treaty.

Once Regulations are made after the Bill comes into force, trade mark applicants will be able to include New Zealand in the countries they may designate under the Madrid Protocol. We will notify you with subsequent news alerts when such Regulations are made.

Although the Nice Classification is already being used by IPONZ, the amendments made by the Bill will allow the Commissioner of Trade Marks to effect the re-classification of over 1000 trade mark registered prior to December 1941. Once this re-classification has taken place, New Zealand can become a party to the Nice Agreement.

Border protection

The Bill also increases the enforcement powers given to New Zealand Customs Service and the National Enforcement Unit (“NEU”). Counterfeiting of registered trade marks is a criminal offence under the current Act, and New Zealand has, in recent years, seen an increase in the importation of counterfeit goods. The Bill provides New Zealand Customs and the NEU with powers of entry, search and seizure as well as additional resources to assist with the active enforcement of the criminal offences prescribed by the Act.

Parallel Importation

The Bill also clarifies the position with regard to the ‘exhaustion of rights’ and parallel importation. Under the current Act, use of a registered trade mark is not considered infringement where that trade mark has been used in relation to the relevant goods anywhere in the world with the consent of the registered trade mark owner. To get around this provision and effectively stop parallel importation, overseas trade mark owners have been assigning their New Zealand trade mark registrations to New Zealand distributors or licensees to stop the ‘parallel’ importation of goods. The Bill broadens the scope of the parallel importation provision such that a registered trade mark will not be infringed where goods bearing the mark have been put on the market, anywhere in the world, by the owner or with the owner’s consent or by “an associated person of the owner”. This expressly includes parties within the same group of companies as the trade mark owner or parties that have effective control over the use of the relevant trade mark.

Licensees

The current Act also provides for the voluntary recordal of licensees on the Register. The Bill amends the Act to remove those provisions and existing entries on the Register will be removed upon enactment of the Bill.

The Bill is expected to receive Royal Assent this week, with the majority of the Bill coming into force the day after assent is received. The enforcement provisions however, will come into force on a date to be nominated by the Governor-General.