Hayes John: Trade Marks (International Treaties and Enforcement) Amendment Bill — First Reading 
Hayes John: Trade Marks (International Treaties and Enforcement) Amendment Bill — First Reading 
[Volume:653;Page:2479] 
JOHN HAYES (National—Wairarapa) 
: 
 Yes it will be good. The Trade Marks (International Treaties and Enforcement) Amendment Bill is arcane and will be rather over the top of the short head of my colleague from somewhere down in the South Island. The bill is an omnibus measure and will amend the Trade Marks Act 2002 and the Copyright Act 1994. It is intended that the bill be divided into two separate bills when we get to the Committee stage: a Trade Marks (International Treaties and Enforcement) Amendment Bill and a Copyright Amendment Bill. The issues addressed in this legislation were considered by our Foreign Affairs Defence and Trade Committee last year. 
The first thing I would like to explain to the Minister from central Christchurch— 
Hon Clayton Cosgrove 
: Not a Minister any more. 
JOHN HAYES 
: —the previous Minister from central Christchurch—is that a trademark is a unique identifier such as a word. It could be “Punch ‘n Grow” for example if one were growing small seeds. It could be a brand a logo a colour a slogan a three-dimensional shape or even a sound that enables a business to easily distinguish its goods and services from those supplied by other traders. It is the difference between for example the “N” for National and the “L” on the desk over there for Labour. It is the blue against the red—yes blue won; red lost. Trademarks are registered by the Commissioner of Trade Marks under the Trade Marks Act 2002. 
The bill that we have before us gives effect to the Government’s decision firstly to accede to the Madrid protocol. For the edification of the House that protocol I recall was adopted originally on 14 April 1891. It has been revised six times since then most recently in 1967. Not very many countries belong to that protocol. Then we have to accede to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. And then we will ratify the Singapore Treaty on the Law of Trademarks. The bill will empower the Ministry of Economic Development and the New Zealand Customs Service to enforce the criminal offence provisions under the Copyright Act 1994 that relate as the member who has just resumed her seat was saying to counterfeit goods and pirated works. The bill will also address one or two miscellaneous issues with the Trade Marks Act. 
I would like to explain to my colleagues that the Madrid protocol provides a system that simplifies the procedures required for a trademark owner to protect his or her trademarks overseas. Joining the Madrid protocol will allow New Zealand owners of trademarks to have their trademarks protected abroad by filing an application for registration of a trademark with the Intellectual Property Office of New Zealand and designating one or more overseas countries that are also members of the Madrid protocol where protection is sought. There is a bit of a gap here in the sense that the counterpart country in which one may want one’s wheelchair for example to be patented needs to be part of the Madrid protocol or that will not be possible. Overseas trademark owners would also be able to use the Madrid protocol to protect their trademarks here in New Zealand. So joining the Madrid protocol will simplify the management of overseas-registered trademarks. It will be possible to renew or record subsequent changes to the trademark registration in each country by using the Madrid protocol through a single procedural step rather than making a request directly to each member country of the protocol. The bill will introduce amendments to the Trade Marks Act to facilitate that happening. 
The Nice agreement provides a classification system for goods and services for the purpose of registering trademarks. Those countries that are parties to the Nice agreement must apply the Nice classification to a registered trademark although those countries that are not a party to it may still apply the Nice classification if they want to. So one does not actually have to be a member in order to use the Nice classification system. New Zealand has applied the Nice classification to registered trademarks for many years. The Nice classification is updated every 5 years and the parties to the agreement meet on a semi-regular basis to consider amendments to it. The advantage for New Zealand of becoming a party to this agreement is that we will be able to participate in those meetings and potentially influence the future development of the Nice classification so that it best meets the needs of businesses in this country. The bill will clarify that the latest edition of the Nice classification must be used with all new applications for the registration of a trademark under the Trade Marks Act. 
I had some doubts about the Singapore treaty during the select committee process. I found that a number of intellectual property lawyers thought there would be no benefit from our joining it. But the point of signing it is that we can use the Singapore treaty to make national trademark registration systems more user-friendly and to reduce business compliance costs for trademark owners. It will do that through the simplification and international harmonisation of national registration procedures. The Singapore treaty does not however seek to harmonise substantive trademark law. The majority of the standards and rules of the Singapore treaty relate directly to the procedures of trademarks and in particular are constructed to make it clear what a trademarks office can and cannot require from applicants. By ratifying the Singapore treaty New Zealand will be able to contribute to the realisation of the treaty’s aim to make national and regional trademark registration systems more user-friendly. It will provide an opportunity for New Zealand to send a clear signal to the international community of its commitment to provide efficient and effective trademark registration arrangements that are consistent with international practice. The bill will allow regulations to be made for the purpose of giving effect to New Zealand’s obligation under the Singapore treaty. 
As one or two speakers have already said there is a growing problem around the world relating to the manufacture distribution and sale of counterfeit goods. I have seen it in Iran where Russian-produced wool has been passed off as New Zealand wool by Russian traders and I have seen locally produced butter in Iran with New Zealand’s Fonterra labels on it even though it was not a New Zealand product. We have experienced in New Zealand a steady growth in the sale of counterfeit products sourced from overseas and in our products being counterfeited in overseas countries. The illegitimate sale of counterfeit products deprives trademark and copyright owners and their licensees of legitimate income and therefore ultimately undermines the profit of businesses. If people step out of line the rules here will be consistent with our obligations under article 61 of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights as well as the Trade Marks Act and the Copyright Act. The penalty for people who do step out of line is a maximum of $150000.