Trade Marks (International Treaties and Enforcement) Amendment Bill

The Foreign Affairs, Defence and Trade Select Committee has reported back on the Trade Marks (International Treaties and Enforcement) Amendment Bill (“the Bill”). The Bill is an omnibus Bill to amend the Trade Marks Act 2002 and Copyright Act 1994 to give effect to:

(a) Ratifying the Singapore Treaty on the law of trade marks;

(b) Acceding to the Nice Agreement concerning international classifications of goods and services for the purposes of registering trade marks; and

The Bill also seeks to strengthen the enforcement powers in the Trade Marks Act and Copyright Act. This is through the appointment of enforcement officers and the granting to these offices the powers to apply to the District Court for production orders. Such orders would require persons to produce documents that are relevant to an investigation of an offence under the Trade Marks Act or Copyright Act. The motivation for these provisions is the Rugby World Cup to be held in New Zealand in September 2011.

The Bill also seeks to amend the Trade Marks Act by clarifying s96(1) which provides for non-infringement for certain prior continuous use of an unregistered trade mark. The Bill amends the section by clarifying that an owner of a registered trade mark would not lose its rights to rely on first use of its trade mark by a predecessor in title.

Another proposed amendment under the Bill was to clarify when the border protection measures would not apply to parallel imported goods. This amendment will allow the Chief Executive of Customs to suspend an accepted notice under certain conditions.

This Bill also awaits a second reading.