1. Update relating to New Zealand’s accession to the Madrid Protocol
Elena Szentivanyi
Henry Hughes,
Patent & Trade Mark Attorneys,
New Zealand and Australia
Madrid Protocol Group Breakfast - 25 May Boston
© Henry Hughes 2010

2. Trade Marks (International Treaties and Enforcement) Amendment Bill
Purpose of Bill:
Amend the Trade Marks Act 2002 and the Copyright Act 1994 to:
accede to the Madrid Protocol;
accede to the Nice Agreement;
ratify the Singapore Treaty;
empower the Customs Service to enforce the criminal offence related to counterfeit goods and pirated works; and
miscellaneous issues relating to the Trade Marks Act.

3. Trade Marks (International Treaties and Enforcement) Amendment Bill
Progress to date:
Introduced into Parliament - 8 September 2008
first reading - 7 April 2009
Consideration of public submissions by the Foreign Affairs, Defence and Trade Committee
Select Committee reported back to Parliament – 15 September 2009
Bill currently standing at number 28 on the order paper of business before the House for its second reading

4. Trade Marks (International Treaties and Enforcement) Amendment Bill
Anticipated time line until implementation
# 28 on order paper of business before the House for its second reading
Second reading expected late June 2010
Third reading shortly thereafter
Once Bill passed – time line for implementation will start
Regulations to be drafted – expected to take 6-9 months
Currently aiming for implementation in mid-2011

5. Trade Marks (International Treaties and Enforcement) Amendment Bill
Key features - Accede to Madrid Protocol
New section 199A inserted
Grant the Governor-General power to make regulations to give effect in New Zealand to the Madrid Protocol

6. Trade Marks (International Treaties and Enforcement) Amendment Bill
Key features - Accede to Nice Classification
Classification of trade marks – substitute new section 31:
(1) Goods and services must be classified, for the purpose of registration of a trade mark, according to the edition of the Nice Classification in effect at the time of application for registration of the trade mark.

7. Trade Marks (International Treaties and Enforcement) Amendment Bill
Key features - Revocation of all registrations of
licensees
Sections 83, 84, 86, and 87 repealed – registration, alteration and cancellation of licensees

8. Please contact us if we can be of any assistance
Thank you
Please contact us if we can be of any assistance
Ph No (04)
© Henry Hughes 2010