of Free Trade Agreements: The New Zealand/Australia Experience


Party 1

Party 2

IP content

In force

New Zealand

Hong Kong and China

• Includes GIs under definitions of IP

• Affirms rights and obligations under TRIPS

• Provides that parties may establish appropriate measures to protect genetic resources, TK and folklore

1 January 2011

Malaysia

• Includes GIs under the definition of IP

• Affirms commitment to the TRIPS agreement

• Encourages cooperation in regards to notification, exchange of information and enforcement

• Parties may take measures to protect TK

1 August 2010

Australia and ASEAN

• Includes GIs under definitions of IP

• Affirms the rights and obligations under TRIPS

• Allows the protection genetic resources, traditional knowledge and folklore

• TRIPS plus obligations re copyright in particular a) parties provide to authors of copyright works the exclusive right to authorise any communication to the public of their works; and b) parties provide criminal procedures and penalties at least in cases where a person wilfully infringes copyright for commercial advantage or financial gain

• Encourages co-operation in implementation of IP systems, communication and transparency

Agreements range from 1 January 2010 to 4 January 2011. In force in New Zealand on 1 January 2010

China

• Requires IP cooperation on information exchange and IP capacity building

• Includes GIs under definitions of IP

• Gives allowances for establishment of measures to protect TK in accordance with international obligations

1 October 2008
 
Trans-Pacific (Brunei, Chile, Singapore)

• Affirms TRIPS obligations (and other multilateral obligations)

• Requires cooperation and information exchange

• Allows for establishment of measures to protect TK

8 November 2006
 
Thailand

• Affirms TRIPS obligations

• Requires cooperation on enforcement, information exchange and enhancing new fields of IP such as TK, genetic resources and folklore

• Includes GIs in definition of IP

1 July 2005
 
Singapore

• Affirms TRIPS Agreement

1 January 2001
 
Australia

• IP not formally covered in the 1983 CER; however IP is included in the 2000 Memorandum of Understanding

Agreements range from 1988 to 2006


Note 1: GI means geographical indication; TK means traditional knowledge; IP means intellectual property; CER means Closer Economic Relations Agreements

Note 2: Further details of the above treaties can be found on the Ministry of Foreign Affairs and Trade (MFAT) website ​www.​mfat.​govt.​nz/​Trade-and-Economic-Relations/​2-Trade-Relationships-and-Agreements/​index.​php#force. Accessed 2 July 2013

Note 3: New Zealand is also negotiating FTAs with the GCC (Gulf Cooperation Council), Korea, and Hong Kong. Negotiations with the GCC have been concluded but the agreement has not yet been signed. Negotiations for expansions to the Trans-Pacific Strategic Economic Partnership, and Pacific Agreement on Closer Economic Relations (PACER) are also taking place. The negotiations are known as ‘PACER plus’ as they involve Australia, New Zealand, the Cook Islands, the Federated States of Micronesia, Kiribati, Nauru, Niue, Palau, Papua New Guinea, the Republic of the Marshall Islands, Samoa, the Solomon Islands, Tonga, Tuvalu and Vanuatu. ​www.​mfat.​govt.​nz/​Trade-and-Economic-Relations/​2-Trade-Relationships-and-Agreements/​index.​php#force. New Zealand is also involved in negotiations with India in regards to an FTA, and have concluded the eighth round of negotiations. ​www.​mfat.​govt.​nz/​Trade-and-Economic-Relations/​2-Trade-Relationships-and-Agreements/​India/​index.​php. Accessed 2 July 2013




Table 2
Free Trade Agreements: Australia













































Party 1

Party 2

IP content

In force

Australia

Malaysia

• Includes GIs under definition of IP

• Affirms the rights and obligations under TRIPS

• Also confirms obligations under the Berne Convention, the Patent Cooperation Treaty, the Paris Convention, the WIPO Convention and the Geneva Act

• Requires parties to ratify the WIPO Copyright Treaty, WIPO Performances and Phonograms Treaty, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, and the Singapore Treaty on the Law of Trademarks

• Requires nationals of both states to be given the same treatment

• Comprehensive articles regarding geographical indications, technological protection measures and rights management in copyright, and ISP liability for copyright infringement

• Encourages cooperation in regards to enforcement of IP rights

1 January 2013

ASEAN and New Zealand

• Includes GIs under definitions of IP

• Affirms the rights and obligations under TRIPS

• Allows the protection genetic resources, traditional knowledge and folklore

• TRIPS plus obligations re copyright in particular a) parties provide to authors of copyright works the exclusive right to authorise any communication to the public of their works; and b) parties provide criminal procedures and penalties at least in cases where a person wilfully infringes copyright for commercial advantage or financial gain

• Encourages co-operation in implementation of IP systems, communication and transparency

Agreements range from 1 January 2010 to 4 January 2011. In force in Australia on 1 January 2010.
 
Chile

• Affirms TRIPS Agreement

• Requires ratification/accession to the Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite, the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure, and the International Convention for the Protection of New Varieties of Plants

• Requires reasonable efforts to ratify/accede to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, the Patent Cooperation Treaty, and the Patent Law Treaty

• Includes comprehensive articles on trade marks, patents, copyrights and enforcement

• Requires cooperation on exchange of information between parties

• GIs are considered in the agreement to be enforceable through trade mark or sui generis system

27 May 2008

Thailand

• Affirms commitments to TRIPS

• Requires measures be taken to prevent the export of goods that infringe copyright or trade marks

• Requires cooperation on enforcement and exchange of information

• Includes GIs in definitions section of IP

1 January 2005

USA

• Affirms TRIPS agreement

• Affirms Patent Cooperation Treaty, the Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure, the International Convention for the Protection of New Varieties of Plants; the Trademark Law Treaty, the Paris Convention for the Protection of Industrial Property; and the Berne Convention for the Protection of Literary and Artistic Works

• Requires ratification of the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty

• Requires best efforts to comply with the provisions of the Geneva Act of The Hague Agreement Concerning the International Registration of Industrial Designs, and the Patent Law Treaty

• Has very comprehensive TRIPS-plus articles on trade marks including geographical indicators, domain names on the internet, copyright works, performers and producers of phonograms, encrypted programme carrying satellite signals, designs, patents, certain regulated products (pharmaceuticals, agricultural chemical products), and enforcement

• Allows for more extensive IP protection than set out in the chapter

1 January 2005
 
Singapore

• Affirms TRIPS obligations

• Requires ratification of the WIPO Performances and Phonograms Treaty, WIPO Copyright Treaty

• Requires compliance with the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs

• Requires measures be taken to prevent the export of goods that infringe copyright or trade marks

• Requires cooperation on enforcement and exchange of information

• GIs included in the definitions section of IP

23 July 2003

New Zealand

• IP not formally covered in CER; however IP is included in the 2000 Memorandum of Understanding on Business Law

Agreements range from 1988 to 2006


Note 1: GI means geographical indication; TK means traditional knowledge; IP means intellectual property; CER means Closer Economic Relations Agreements

Note 2: Further details of the above treaties can be found on the Department of Foreign Affairs and Trade (Cth) (DFAT) website www.​dfat.​gov.​au/​. Accessed 1 October 2009

Note 3: Australia is also engaged in negotiations for FTAs with China, the GCC (Gulf Cooperation Council), Japan, the Republic of Korea, India and Indonesia.. Negotiations are also being undertaken towards the PACER plus and joining Trans-Pacific Strategic Economic Partnership. See DFAT website: www.​dfat.​gov.​au/​. Accessed 1 October 2009


This makes it all the more imperative to understand the limited cooperation actually achieved on intellectual property matters as a result of the Australian/New Zealand CER Agreement [now known as the single economic market (SEM)]. A simple explanation is that the Agreement itself predates the TRIPS Agreement and was concluded before intellectual property protection was seen as a matter of significance to trade. However, this explanation does not apply to the 2000 Memorandum of Understanding on Business Law Coordination (MOU),17 which post-dated the TRIPS Agreement but made no provision for harmonization of intellectual property standards, providing merely for exploring potential for coordination on ‘the granting and recognition of registered intellectual property rights’.18 In the 2006 version of the MOU this has become slightly more specifically a commitment to ‘[d]evelopment of a seamless processing regime for the granting of patents and the registration of trade marks, plant variety (or breeders’) rights and patent attorneys’.19

Since then New Zealand has enacted the Madrid Protocol in relation to trade mark registration and politicians on both sides of the House have cited a reason for the change as being to align New Zealand’s trade mark system more closely with Australia’s.20 The Minister then in charge of intellectual property policy stated that joining the Madrid Protocol ‘represents a further step towards the Government’s objective of creating a single economic market with Australia – an important objective which I know my predecessor shared the same level of enthusiasm for advancing’.21 However, we wonder how much influence Australia really had on New Zealand’s decisions to take the Madrid Protocol path, given that there are many other countries in the world today which are party to this international convention. As far as patent law reform is concerned, the two countries still seem intent on taking their own paths in many respects. New Zealand is mooting a world-wide prior art standard for novelty and inventive step (rather than its current domestic one),22 while Australia is currently contemplating a further internationalization of its own standards with a change from its still partly Australian focussed common general knowledge threshold for assessing inventiveness to one that is international.23 However, in the Australian case (where the reform is only tentatively being considered at this stage as part of an IP Australia initiated process of consultation on law reform), the recommended change is not on the basis of New Zealand reforms but rather because the current Australian approach ‘restricts common general knowledge in a way that it is not restricted in our major trading partners and under the PCT (Patent Cooperation Treaty), where when in assessing inventive step, common general knowledge anywhere in the world can be taken into account’.24

At the same time there are many areas of difference in the two countries’ intellectual property laws, so it cannot be said that a high degree of harmonization is already present. For instance, Australia and New Zealand currently have different terms of copyright,25 different ownership rules in copyright,26 different defences to infringement of copyright,27 different ways of treating parallel imports of copyright material,28 different innovation thresholds in patent law,29 different treatment of medical uses under patent law, different approaches to functional designs,30 and different categories of trade mark registration.31

In New Zealand, consultation is required with a Māori advisory committee on registration of culturally offensive trade marks in the New Zealand Trade Marks Act32 and inventions utilizing traditional knowledge in the current Patents Bill,33 but there is no equivalent to this in Australia (nor is it contemplated). And New Zealand’s Toi Iho label of authenticity was established with relative ease and is working smoothly, while in Australia the efforts to establish and then maintain a similar label were fraught with difficulties played out on the public stage, with the governing body eventually disbanded.34 While some important steps towards reconciling Indigenous35 and non-Indigenous attitudes to innovation may have been taken as a matter of common law in Australia, these are modest by comparison with the legislative reforms in New Zealand. For instance, in Australia where there is no treaty with the Indigenous population, von Doussa J in Bulun Bulun v. R&T Textiles Pty Ltd 36 recognized that traditional artists may owe (western-style) fiduciary obligations to their communities as a result of the knowledge and skills that have been passed on through generations and used with appropriate permission (in this instance of the Ganalbingu people whose rituals and knowledge the artwork in question embodied) but without going as far as to recognize communal ownership. By contrast, in New Zealand the Treaty of Waitangi acknowledges the community nature of Māori culture37 and the scope of this was debated in the ‘Wai 262’ claim,38 brought by six Māori tribes before the Waitangi Tribunal.39

At very least the latter reveals some fundamental and intractable social divergences between the two countries. Thus, as New Zealand delegate, Captain William Russell—who readily accepted that any union with Australia would have to be on Australian terms—presciently observed at the Australasian Federation Conference of 1890:

[O]ne of the important questions in New Zealand politics for many years to come must be that of native administration, and were we to hand over that question to a Federal Parliament — to an elective body, mostly Australians, that cares nothing and knows nothing about native administration, and the members of which have dealt with native races in a much more summary fashion than we have ventured to deal with ours in New Zealand — the … advance of civilisation would be enormously delayed.40

In our experience, such ways of thinking are still strongly adhered to on the part of New Zealand, with a continuing lack of appreciation or understanding of the sensitivity of the issues on the part of Australia. Thus there would likely be a storm of public protest on both sides of the Tasman if either country sought to change its intellectual property laws to meet the other’s standards on traditional culture and knowledge.

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