Minutes - TRIPS Council Special Session - View details of the intervention/statement

Ambassador D. Mwape (Zambia)
B.i First sub-question
29. The representative of New Zealand welcomed the Chairman's questions which he said were useful for focusing their ongoing discussions on practical issues and sharing of Members' national procedures. He said that, having just received those questions, he would endeavour in good faith to provide some preliminary responses. His delegation would also refrain from making any judgments on the meaning of some of the terms used in the sub-questions, such as "substantiation" or "legally obliged". 30. He recalled that New Zealand did not have a sui generis system, and therefore geographical indications could be protected in New Zealand through different avenues. The principal avenues of protection were through the trademark system or through the general competition and consumer protection law. In the trademark system, geographical indications could be protected, including as certification or collective marks, under the Trade Marks Act 2002, and that avenue had been used by a number of foreign GI owners. In contrast, under New Zealand's general competition and consumer protection law, protection for unregistered trademarks and geographical indications could be obtained through the common law action of "passing off", through consumer protection law or under its Fair Trading Act 1986. That was in fact how "Champagne" had obtained protection in New Zealand in a case that predated the TRIPS Agreement. With regard to the Chairman's first sub-question, he said that those two avenues of protection had to be considered separately. 31. Firstly, under the trademark system, the Intellectual Property Office of New Zealand (IPONZ) was required to consider a number of sources of information, when determining whether there were relative grounds that would prevent the registration of a term under New Zealand's Trade Marks Act 2002. Those sources included New Zealand's national trademark register, in order to determine whether protection was precluded by an earlier trademark that was identical or confusingly similar. 32. A second source of information was New Zealand's national legislation, particularly legislation that would impact on the registration of the term. For example, the Flags, Emblems and Names Protection Act 1981 provided for the non-registrability of certain names. 33. A third source of information, which was probably unique to New Zealand, was information and advice provided to the Intellectual Property Office by the Maori Advisory Committee. The Maori were the indigenous people of New Zealand. One of the ways that Maori traditional knowledge and traditional cultural expressions were respected in the Trade Marks Act was through the prohibition of the registration of a term offensive to Maori. Consequently, in determining whether the use or registration of a term would be offensive to the Maori, the Intellectual Property Office was obliged to take into account the information and advice provided by the Maori Advisory Committee. 34. A fourth source of information would be international obligations, for example those provided by the Paris Convention. 35. In short, those were some of the sources of information which the Intellectual Property Office was obliged to take into account, and failure to take account of those sources of information would provide grounds for a successful judicial review of the decision of the Intellectual Property Office. 36. There was, however, no express legal requirement that obliged the Intellectual Property Office to consult specific sources of information when determining whether a trademark had a distinctive character. As a result the sources of information that would be considered were potentially infinite and at the discretion of the examiner. Consequently, an obligation to consult an international register would thus constitute a significant additional element in New Zealand's domestic system. In terms of sanctions, failure to consult that register would provide grounds for a successful judicial review of the decision of the Intellectual Property Office. 37. Lastly, he said that it should be noted that legislation in New Zealand did not predetermine the weight to be given to any particular source of information. Rather, it considered it important to leave intellectual property examiners with the discretion to weigh all the evidence on a case-by-case basis, and not have their decision biased through legal devices such as presumptions. Consequently, his delegation did not concur with the delegation of the European Union that the consequences of registration on an international register should be prescribed in advance. 38. In relation to unregistered trademarks and geographical indications, he briefly noted that decisions on the protection of unregistered geographical indications and trademarks under New Zealand consumer protection law and competition law were made by the standard courts, the High Court in that case. Consequently, the usual evidential requirements of that Court applied. The litigants were entitled to draw on any sources of evidence that they wished in support of their argument. The Court would consider any evidence before it, but had discretion to weigh that evidence as it saw fit on a case-by-case basis. Failure to take account of the relevant evidence to it would provide grounds for an appeal of the Court's decision.
The Special Session took note of the statements made.
TN/IP/M/26