By Andrew Steele - 3 Aug 2009
Registering trade marks overseas may soon become much easier
with the introduction of the Trade Marks (International Treaties
and Enforcement) Amendment Bill 2008.
If enacted, the Bill's provisions will allow New Zealand to
become a party to the Madrid Protocol. This is a system
designed to simplify the international registration of trade marks
amongst members. Several of New Zealand's largest trading
partners are already parties to the Madrid Protocol, including
Australia, the United Kingdom, the United States of America and the
European Union.
Currently, to protect a trade mark overseas, a New Zealand
business must file a separate application in each country where it
wishes to register the trade mark. The New Zealand business
must comply with each country's specific requirements.
Becoming a party to the Madrid Protocol will simplify the
process. A New Zealand trade mark owner will be able to seek
international registration by filing a single application in New
Zealand. This application will designate any other overseas
countries (that are a party to the Madrid Protocol) where the trade
mark owner wants to register the trade mark.
The designated country's trade mark office has the right to
refuse protection within a specified period. If protection is
not refused, the trade mark is protected in that country as if it
had been registered by that country's trade mark office. New
Zealand trade mark owners will also be able to make subsequent
changes and renewals by a single application.
New Zealand businesses need to be aware, however, that becoming
a party to the Madrid Protocol will also make it easier for
overseas businesses to register their trade marks here.
It is unclear at this stage when the Bill may become
law. It was introduced into Parliament on 8 September 2008 and
had its first reading on 7 April 2009. The Bill is currently
with a Select Committee for consideration.
If you have any questions regarding these changes,
please contact our intelletual
property team.