Huo Raymond: Trade Marks (International Treaties and Enforcement) Amendment Bill — First Reading 
Huo Raymond: Trade Marks (International Treaties and Enforcement) Amendment Bill — First Reading 
[Volume:653;Page:2487] 
RAYMOND HUO (Labour) 
: 
 I rise to support the Trade Marks (International Treaties and Enforcement) Amendment Bill at its first reading. First of all I thank the Hon Lianne Dalziel and the Hon Judith Tizard for the great work they did to introduce the bill in September 2008. The bill was introduced to address certain deficiencies in New Zealand’s current intellectual property regime and to allow New Zealand to join three international trademark treaties. This bill amends the Trade Marks Act 2002 and the Copyright Act 1994. 
This bill has three main purposes: firstly to enable New Zealand to join three international treaties administered by the World Intellectual Property Organization including the much-awaited accession to the Madrid protocol; secondly to enhance the existing enforcement provisions in the Trade Marks Act and the Copyright Act to further deter counterfeiting of registered trademarks and piracy of copyright-protected works; and thirdly to address several minor and technical issues within the Copyright Act the Trade Marks Act and the Trans-Tasman Mutual Recognition Act 1997. 
Under the bill amendments to the Trade Marks Act will allow New Zealand to accede to three important international trademarks treaties: the Singapore Treaty on the Law of Trademarks or the Singapore treaty; the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks or the Nice agreement; and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks or the Madrid protocol. 
The Madrid protocol is much awaited because it provides a system that simplifies the procedure and reduces the cost for trademark owners seeking trademark protection internationally. It provides a system that allows a trademark owner to have a trademark protected in up to 76 member countries by filing one application for the registration of a trademark through the local trademarks office designating one or more member countries where protection is sought. The bill introduces amendments to the Trade Marks Act to allow the Madrid system to be implemented in New Zealand through regulations. Among the 76 countries that are currently party to the protocol most of them are our leading trading partners including the European community the United States of America Singapore and China. 
A 2007 figure released by the World Intellectual Property Organization showed that a record number of international trademark applications were filed—up by 9.5 percent from the same time in 2006. Currently a New Zealand trademark owner who wishes to protect a trademark overseas must file separate trademark applications in each country and comply with each country’s specific requirements. 
Joining the Madrid protocol will mean that New Zealand trademark owners will be able to file international trademark applications by filing a single application for the registration of a trademark with the Intellectual Property Office of New Zealand. The application will be able to select the overseas countries for trademark protection in that single application. Of course that overseas country must be a party to the Madrid protocol. The advantage is obviously the cost saving. The process of protection under the protocol is also likely to be much faster as there are strict time limits for intellectual property offices to examine trademark applications under the protocol. 
However there are perceived disadvantages. Simpson Grierson published a very informative paper that stated two such disadvantages. The first one is that accession to the protocol would result in more trademarks being filed in New Zealand leading to a clogging of the register with trademarks that are not actually in use in turn making it more difficult for New Zealand businesses to clear a trademark for use. Another concern or a procedural disadvantage is in relation to a concept of a central attack whereby an international application is dependent on the home application or registration for a period of 5 years. If the home application does not succeed or is removed an applicant’s international application will also fall over. 
The protocol currently only partly addresses this issue by allowing an applicant to re-file national applications. It will be interesting to see what more we can debate on this issue at the bill’s second reading and its Committee stage. The Singapore treaty aims to make national trademark registration systems more user-friendly and to reduce compliance cost for trademark owners through the simplification and international harmonisation of national registration procedures. 
The Nice agreement governs the international classification of goods and services for the registration of trademarks. A single international classification system will obviously provide efficiencies in respect of monitoring conflicting trademarks and processing pre-filing clearance searches. It is odd to see however that although New Zealand has been using the Nice classification system for decades it is not a party to the Nice agreement. 
The second purpose of the bill is to empower the Ministry of Economic Development and the New Zealand Customs Service to play an active role in enforcing the criminal offence provisions for trafficking in counterfeit goods alongside and in cooperation with the New Zealand Police. The importation and sale of counterfeit goods is a growing problem in New Zealand with the majority of counterfeit goods being sourced from overseas. Since July 2000 the number of counterfeit goods that have been detained by the New Zealand Customs Service has increased by over 400 percent. 
The bill amends both the Trade Marks Act and the Copyright Act in order to provide the Ministry of Economic Development’s national enforcement unit the Customs Service and the police with standard investigative tools including the ability to apply for and execute search warrants. Currently trademark and copyright owners may make a request to the Customs Service for it to detain imported goods at the border if it suspects that those goods infringe the owner’s trademark and/or copyright rights. The poor trademark or copyright owner will then have 10 working days from notification of the detention either to persuade the importer to forfeit the goods on a voluntary basis or to issue court proceedings for infringement. The importer would normally get a letter from the lawyer acting for the trademark or copyright owners. 
Hon Simon Power 
: Come on Raymond! Throw away the notes! Speak from the heart! 
RAYMOND HUO 
: Of course. Normally those letters would be worded in legally strong language. Despite that and especially when the size of the shipment was relatively small it might not be worth issuing court proceedings. The importer would likely not voluntarily forfeit the goods. Is that right? 
Hon Simon Power 
: That’s right. 
RAYMOND HUO 
: I am very happy to see that members opposite concur. These moves to enhanced enforcement of the criminal offence provisions have been welcomed by trademark and copyright owners and their licensees. Therefore I commend the Trade Marks (International Treaties and Enforcement) Amendment Bill to the House.