Enforcing your intellectual property rights
If you own intellectual property, you are responsible for monitoring the way it is used and protecting it against infringement. You should make others aware of your legal rights and can defend those rights through legal action, if you need to.
Legislative framework for enforcing intellectual property rights
A number of statutes provide civil and/or criminal enforcement procedures for owners of intellectual property rights in New Zealand. They include:
- Consumer Guarantees Act 1993
- Copyright Act 1994
- Crimes Act 1961
- Designs Act 1953
- Fair Trading Act 1986
- Geographical Indications (Wine and Spirits) Registration Act 2006 (not in force)
- Layout Designs Act 1994
- Patents Act 1953
- Plant Variety Rights Act 1987
- Trade Marks Act 2002
Existing criminal intellectual property offences and penalties
Copyright Act 1994 and Trade Marks Act 2002
The Copyright Act 1994 and the Trade Marks Act 2002 both contain provisions imposing civil liability for activities that constitute copyright and trade mark infringement. Civil liability means a lawsuit may result in payment of damages or other civil court-enforcement, as distinguished from criminal liability, which means open to punishment for a crime.
Copyright and trade mark owners can take court action in response to alleged infringing activity. The courts have a wide range of civil remedies available to them to compensate aggrieved owners. These include:
- Orders to account for profits
- Orders to hand over infringing goods to right holders (called “delivery up”).
The Copyright Act 1994 and the Trade Marks Act 2002 also contain criminal offences for the infringement of copyright works in the course of business and counterfeiting of registered trade marks for trade purposes. A person convicted for such activity may be imprisoned for up to five years or fined up to $150,000.
The New Zealand Police are able to investigate and prosecute copyright pirates and trade mark counterfeiters. Amendments to both acts are currently before Parliament to enable the Ministry of Economic Development and the New Zealand Customs Service to investigate and prosecute offenders.
Fair Trading Act 1986
The Fair Trading Act 1986 is relevant to commercial activities relating to goods that infringe a registered trade mark owner's rights. It imposes criminal liability for:
- Forging a trade mark
- Falsely using a trade mark or sign so it nearly resembles an existing trade mark, in a way that is likely to mislead or deceive
- Trading in products bearing misleading and deceptive trade descriptions.
The applicability of these provisions to commercial activities involving counterfeit goods will depend on the facts of each case.
The Commerce Commission enforces legislation that promotes competition in New Zealand markets and prohibits misleading and deceptive conduct by traders. The Commerce Commission does not give advice or take civil actions on behalf of the public.
Consumers or businesses seeking compensation for a breach of the Fair Trading Act can take a civil action through the Disputes Tribunal or the District Court.
Border control measures
New Zealand has implemented border enforcement measures in accordance with our obligations under the Trade Related Aspects of Intellectual Property (TRIPS) Agreement. They allow trade mark and copyright owners to request New Zealand Customs Service to detain suspected pirated and counterfeit goods at the border that be either being imported into or are being transhipped through New Zealand to enable the trade mark or copyright owners to initiate court action for trade mark or copyright infringement.
Border enforcement measures do not, however, apply to goods imported by a person for their private and domestic use.
Trade mark and copyright owners can request the assistance of Customs by lodging notices identifying their New Zealand registered trade marks and the goods to which the registration relates to or description of the nd works that are subject to copyright protection.
When a notice has been lodged, Customs is able to detain suspectedinfringing trade mark goods and copyright works.
Customs can detain goods and work subject to a notice for 10 working days (extendable to 20 days on request). Notices are can remain valid for a period of up to five years, or until the period of copyright protection or trade mark registration expires, whichever is shorter.
The right-holder must complete a form of indemnity to cover costs that might be incurred by the Customs Service in enforcing notices, such as storage, transport and legal costs and pay a bond of $5,000 which is refundable at the end of the notice period.
Where goods are detained, Customs notifies right holders so they can determine whether the goods or work infringing their trade mark or copyright rights. During this detention period, right holders must also decide whether they will pursue civil proceedings against the importer to prove that the goods infringe their rights.
Suspected goods will be detained by Customs pending the decision of the court. If a right holder does not commence proceedings within the ten-day period, Customs is required to release the goods to the importer.
For further information, the Customs Service has prepared an information sheet on the process for lodging a notice. Their website also contains a list of current trade mark notices and copyright notices.
Administrative agencies in New Zealand
Various New Zealand agencies may be able to assist you to enforce your rights as the owner of intellectual property. Before contacting any of these agencies you should talk with a patent attorney or a legal professional specialising in intellectual property (See Legal advice).
New Zealand Customs Service
For copyright and trade mark infringement at the border
P O Box 2218
17-21 Whitmore Street
Phone: 04 473 6099
Freephone: 0800 428 786 (New Zealand callers only)
Fax: 04 473 7370
Website: New Zealand Customs Service website
New Zealand Police
For enforcing the criminal offences for counterfieing trade marks and copyright piracy
P O Box 3017
180 Molesworth Street
Phone: 04 474 9499
Fax: 04 498 7400
Website: New Zealand Police website
The Ministry of Economic Development is not able to provide legal advice. If you have concerns about your legal position, please contact an intellectual property lawyer:
Find out more
To find out more about your rights as the owner of intellectual property, please contact the Intellectual Property Policy Group.