Enforcement of Intellectual Property Rights
Passing off, Fair Trading Act and mātauranga Māori
Passing off and the Fair Trading Act may be useful tools to help Māori protect against false or misleading claims of authentic indigenous goods, such as arts and crafts.
In Aotearoa-New Zealand, a number of statutes provide enforcement procedures and remedies for owners of IP rights. The statutes include:
- Consumer Guarantees Act 1993;
- Copyright Act 1994;
- Designs Act 1953;
- Fair Trading Act 1986;
- Layout Designs Act 1994;
- Patents Act 1953;14
- Plant Variety Rights Act 1987;
- Trade Marks Act 2002; and
- The Crimes Act 1961.
Civil enforcement and existing criminal offences and penalties
The Copyright Act 1994 and the Trade Marks Act 2002
The Copyright Act 1994 and the Trade Marks Act 2002 both contain provisions imposing sanctions for activities that constitute copyright and trade mark infringement. Copyright and trade mark owners can enforce their rights by taking court action if they believe their rights have been infringed. The Courts have a wide range of remedies available to them to compensate owners of copyright and registered trade marks. These include damages, injunctions, orders to account for profits, and orders to deliver up infringing goods to right holders.
The Copyright Act and the Trade Marks Act also contain criminal penalties for wilful infringement on a commercial scale, i.e. piracy of copyright and counterfeiting of registered trade marks for commercial gain. A person convicted of this type of activity may be imprisoned for up to five years or fined up to NZ$150,000.
The Fair Trading Act 1986
The Fair Trading Act is useful for IP owners, and trade mark owners in particular, seeking to protect their rights. The Act imposes sanctions for forging a trade mark or for falsely applying or using a trade mark or sign that looks similar to an existing trade mark such that consumers could reasonably be misled or deceived. Whether these provisions will apply to activities involving counterfeit goods will depend on the facts of the particular case.
Border Enforcement Measures
Aotearoa-New Zealand has also implemented a number of border enforcement measures. These measures allow trade mark and copyright owners and licensees to request the detention of goods suspected of infringing a registered trade mark or copyright that are intended for sale while they are held by the New Zealand Customs Service. Border enforcement measures do not, however, apply to goods imported by a person for their private and home use.
IP owners can ask the Customs Service for help by lodging notices of their Aotearoa-New Zealand registered trade marks and goods subject to copyright protection. When a notice has been lodged, the Customs Service is able to hold unauthorised copies of trade marked goods or goods subject to copyright protection for a period of 10 working days.
For more information, see the Customs website.
Passing off
Passing off is a common law doctrine (common law refers to law that has evolved over time as a result of court rulings) that protects a trader's right to a name or the goodwill in that name.
The most common example of passing off is where a person claims that their products are somehow connected to another trader's products, essentially "cashing in" or "free-riding" on the goodwill and reputation that a trader's products may enjoy in the marketplace. If the market is confused and the products are inferior, a trader may suffer damage including lost sales and loss of market goodwill.
You can take someone to court to stop them from passing off trade marks and/ or products. There are three elements that must be established to succeed in a "passing off " action in court:
- There must be a goodwill or reputation attached to the goods or services which is conveyed to the consumer by means of the identification of the good or service.
- There must be a misrepresentation to the public (whether intentional or not).
- The applicant must demonstrate that they have suffered damage due to the wrongly held belief caused by the misrepresentation.
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