Information Sheet: Enforcing Your Intellectual Property Rights
[ Last Updated 23 February 2007 ]
Please read the Ministry's disclaimer notice.
Legislative Framework
In New Zealand, a number of statutes provide civil and/or criminal enforcement procedures and remedies for owners of intellectual property rights. The statutes 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
Depending on the nature of the intellectual property right you own and the nature of the alleged infringement, various New Zealand agencies may be able to assist. Before contacting any of these agencies, it is recommended that you consult with either a patent attorney or a legal professional specialising in intellectual property. To find such people see the section on Legal Advice below.
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 civil liability for activities that constitute copyright and trade mark infringement. Copyright and trade mark owners can enforce their rights by taking court action in relation to alleged infringing activity. The Courts have a wide range of civil remedies available to them (under the respective Acts and under common law) to compensate aggrieved 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 1994 and the Trade Marks Act 2002 also contain criminal offences for the piracy of copyright works and counterfeiting of registered trade marks for commercial gain. A person convicted for such activity may be imprisoned for up to five years or fined up to NZ$150,000. The New Zealand Police are able to investigate and prosecute copyright pirates and trade mark counterfeiters. Amendments to both Acts are planned to enable the Ministry of Economic Development to also investigate and prosecute offenders.
The Fair Trading Act 1986
The Fair Trading Act 1986 is also relevant to commercial activities relating to goods that infringe a registered trade mark owner's rights. The Act imposes criminal liability for forging a trade mark or falsely applying or using a trade mark or sign so nearly resembling an existing trade mark as to be likely to mislead or deceive. It is also an offence to trade 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 the particular case.
The Commerce Commission [link to Commerce Commission website] 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 TRIPS Agreement [link to WTO website]. These measures allow trade mark and copyright owners and licensees to request the detention of suspected pirated and counterfeit goods while they are subject to the control of the New Zealand Customs Service [link to NZCS website]. Border enforcement measures do not, however, apply to goods imported by a person for their private and domestic use.
Right holders can request the assistance of the New Zealand Customs Service by lodging notices of their New Zealand registered trade marks and goods subject to copyright protection. When a notice has been lodged, Customs is able to detain unauthorised copies of trade marked goods or goods subject to copyright protection.
Customs can detain goods subject to a notice for a period of ten working days. Notices are valid for either five years, after which they are renewable, or until the period of copyright protection or trade mark registration expires. If Customs becomes aware that suspected infringing goods have been imported and an applicable notice is not in place, it can advise the right holder (if known) of the importation and advise them to lodge a notice with the Customs Service.
The rightholder must complete a form of indemnity to cover costs that might be incurred by the Customs Service (such as storage, transport and legal costs) in enforcing notices.
Where goods are detained, Customs notifies right holders so that they can determine whether the goods are pirate or counterfeit products. During this detention period, right holders must also decide whether they will pursue proceedings to prove that the goods infringe their rights - though a further ten day period is available in some circumstances, by application with supporting reasons. 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 New Zealand Customs Service has prepared an information sheet on the process for lodging a notice [link to NZCS website]. Their website also contains a list of trade mark notices [link to NZCS website] and copyright notices [link to NZCS website] that have been accepted by the Service.
Administrative Agencies within New Zealand
Further Information
Latest Developments
→ Latest Developments in Intellectual Property in New Zealand
Useful Websites
→ Useful Intellectual Property-Related Websites
Legal Advice
The Ministry of Economic Development is not able to provide legal advice. If you have concerns about your legal position, please contact a legal professional familiar with the law relating to intellectual property. You can search for an intellectual property lawyer in the following places:
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