Trade Marks (International Treaties and Enforcement) Amendment Bill
The Trade Marks (International Treaties and Enforcement) Amendment Bill ("Bill") recently passed its first reading in Parliament. The Bill seeks to bring New Zealand law into line with two international Treaties as well as giving two government departments more enforcement powers by amending the Trade Marks Act 2002 ("Act") as well as parts of the Copyright Act 1994.
The most striking change that the Bill will bring about is the ability for trade mark owners to apply for trade mark protection in other countries as well as New Zealand as part of making an application for the same trade mark in New Zealand. This is a result of New Zealand's commitment to the Madrid Protocol.
Currently if a New Zealand company wishes to register their trade mark in another country they must make a separate application in that country which usually involves engaging lawyers in that country. These amendments mean that they can use their local lawyers to apply to the New Zealand authorities for protection in these countries at the time they apply in New Zealand.
Another point of interest is the wider powers to prosecute, and search and seize infringing trade marked and copyright material. The Bill will empower Customs and the Ministry of Economic Development to seize items which infringe a registered trade mark or copyright with the use of a warrant, and in certain circumstances without a warrant.
The Bill also seeks to clarify the law around parallel imports by making it clear that the advertising of parallel imported goods using the registered trade mark does not constitute trade mark infringement.
The Bill has been referred to the Foreign Affairs, Defence and Trade Committee who's report is due in October 2009. It is likely that the Bill will not be passed into law until some time in 2010 at the earliest.
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Last updated: 24 July 2009
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