Trade Marks Amendment Bill

The Ministry of Economic Development is planning to introduce a Trade Marks Amendment Bill. Broadly this will cover three areas:

(a)  The Madrid Protocol: it will enact provisions enabling New Zealand to accede to the Madrid Protocol and provide for Madrid Protocol filings in New Zealand;

(b)  The Bill will address a small number of drafting issues which have come to light. These include

(i)  clarifying that under s66(1)(b) the period of non-use (i.e. period of suspended use) is a continuous period of three years or more that commences from a date after the actual date of registration and continues uninterrupted up to the date one month before the application for revocation;

(ii)  Section 95 is to amended by providing that a person does not infringe a registered trade mark if, in accordance with honest practices in industrial or commercial matters, the person uses the registered trade mark to indicate the intended purpose of the goods (in particular as accessories or spare parts) or services. These provisions will then be removed from s97(b) and (c);

(iii)  the exhaustion of rights provision in s97A is to be clarified to prevent the practice of overseas trade mark owners assigning their local trade mark registrations to local distributors or licensees as a means of stopping the legitimate parallel importation of goods;

(iv)  there are to be a number of changes to the border enforcement provisions to enable the chief executive to suspend a notice where the information held in respect of the border enforcement notice is no longer current or costs payable for enforcement of the notice have not been paid.

(c)  A change to the enforcement of the criminal offence provisions in the Trade Marks Act to give these powers to the National Enforcement Unit of MED. This is a reflection of dissatisfaction with the way the New Zealand Police have failed to give appropriate priority to enforcement of the criminal provisions in both the Trade Marks Act and Copyright Act.