IP in NZ

INTELLECTUAL PROPERTY IN NEW ZEALAND

A SUMMARY OF THE LAW

1.BACKGROUND

Intellectual property, in the broadest sense, is something which emanates from the human intellect. In the legal sense it is a series of often interlocking products of human intellect, to which the law attaches various rights, most of which are proprietary in nature.

Thus, intellectual property or “IP” rights could be termed legal rights which may be asserted in respect of the tangible product of human intellect. IP rights attach, in the main, to intangible things, rather than the physical object in which they are contained or reside; hence their growing importance in our information orientated society.

The popular use of the terms intellectual or industrial property is a relatively recent development. Traditionally, IP rights developed separately, at times along quite different paths. As a result, these rights exist quite independently of each other but often inter-relate and affect each other to a considerable extent.

Today there is a much greater tendency for IP owners to recognise, monitor and administer their rights more carefully and vigorously than in the past. There is also an increasing recognition of the market value of IP/content and how it can be exploited.

Clients wishing to protect their ideas, innovations, original content and distinctive identities and indicia will need good informed legal advice.  It is not difficult to gain a basic working understanding of IP. However, to obtain a detailed knowledge of the different types of rights, how they work and importantly how they inter-relate can be more difficult.

This outline is not for the specialist but the hurried generalist who needs an overview. The approach is to explain the law briefly, to outline the key procedures, and where appropriate, give an idea of some of the costs. A few of the more important “application forms” have been appended in the schedule to this chapter. However, note that there are a vast number of forms which are found in the Regulations of the various Acts.

A small note of caution; overseas law often has to be treated with some care. While overseas authorities may be the only direct authority on an issue, the statutory foundation may be markedly different to that applying in New Zealand. That is particularly likely with US decisions in the IT field, many of which are now based on recent, far-reaching and differing legislation, one example being the Digital Millennium Copyright Act.

For a general overview of the law, reference can be made to other resources on this website. In terms of international IP law, the website of the Intellectual Property and Entertainment Law Committee of the IBA is a useful starting point – accessible at http://www.ibanet.org/

2.CONTENTIOUS MATTERS

Historically New Zealand has been part of the British Common Law system. In terms of both substantive and procedural law this remains the same today. However, greater reliance is now placed on local developments, including those in Australia.  The abolition of the right of appeal to the Privy Council and the creation of the Supreme Court will undoubtedly speed up this process.

The majority of IP cases are dealt with in the High Court. The District Court has jurisdiction to handle IP (and of course other) matters up to $200,000 in value. Traditionally, however, most litigants prefer to litigate in the High Court.

The hearings division of the Intellectual Property Office of New Zealand (IPONZ) handles patent, trademark and design oppositions and similar disputes and is the tribunal of first instance for most IP disputes. Its decisions are available on line at www.iponz.govt.nz.

3.PATENTS

A patent is a monopoly right granted for a limited period, for a product or process which is novel (new) and inventive (non obvious). A patent is able to cover the broad concept of an invention, preventing others from exploiting the patented invention, while the patent is in force. New Zealand Patent Law is based on the Patents Act 1953 as amended by the Patents Amendment Act 1994 and others.

A patent allows the patentee to make, use, exercise and sell an invention and its products for 20 years, subject to payment of renewal fees at intervals. Those who infringe patent rights are liable for damages and subject to the usual civil remedies.

The law of patents has evolved over centuries.  It has recently become a major talking point in the e commerce area.  After a U.S. Federal Circuit Court of Appeals ruling in 1998. In State Street Bank & Trust Co v Signature Financial Group Inc, 927 F.Supp 502(D) Mass. (1996), the Federal Circuit found that the invention, even though a method of doing business, produced a “useful, concrete and tangible result” that provided practical utility. Accordingly, it held that the invention was patentable.

After State Street, methods of doing business have been regarded in the same light as other methods and subjected to the same rules. The decision has created a rush to file business method patent applications. While the New Zealand courts have yet to decide whether software or business methods are patentable IPONZ accepts them. It is likely the New Zealand that the courts will follow the international approach.

Searches and Patent Application

Patents are obtainable in New Zealand for “any manner of new manufacture”, a phrase given a very wide interpretation. Anyone wishing to introduce a new product or technology or protect an invention by a patent in New Zealand is advised to have a search conducted at IPONZ to provide an indication of what has been done in the same field previously.

This search will:

•Reveal any existing New Zealand patent which could be infringed if the inventor’s manufacture and marketing proceed; and

•Identify any existing New Zealand patent which, relating to the same or similar invention, may hinder or preclude the inventor obtaining a New Zealand patent.

If the invention appears to be one which is patentable, a patent application may be filed at IPONZ, accompanied by either a provisional or complete specification describing the invention. A sample Patent Application Form is appended to this chapter. The documents must meet formal requirements, and a fee must accompany the application. When the application is filed with a provisional specification, a complete specification must be filed within 12 months.

It is essential that the invention be kept secret prior to the lodging of an application. The invention may be disclosed to partners, consultants and patent attorneys but not a potential customer, licensee or purchaser of the invention or technology. The invention remains secret for a period after filing a patent application. Prior to commercial launch, all disclosures should be made subject to a Confidential Disclosure Agreement. A sample agreement is appended to this chapter.

Once all the formalities are completed, the complete specification is examined by an IPONZ examiner. The examination will assess whether the invention is novel at the date of priority, and will also check that the specification meets the conditions for grant of a patent. For example, a complete specification must describe the invention and method by which it is to be performed, disclose the best method for performing the invention known to the applicant and must include a claim or claims defining the scope of the invention.

The patent application is published. There is a 3month opposition period and, in the absence of opposition, the patent is granted.

International Filing of Patent Applications

New Zealand is a party to the Paris Convention for the Protection of Industrial Property (1883) which enables a person who has filed a patent application in one convention country to claim priority from that application in any subsequent application for the same invention filed in another convention country, within 12 months of the first application.

Since 1992 New Zealand has been a member of the Patent Cooperation Treaty (PCT). A single PCT patent application can designate one or more of the large number of contracting States.

At the date 12 months from the initial filing of the New Zealand patent application, an applicant can now elect to proceed with the PCT route which will provide an extra 18 months before an election must be made as to which national or regional patents should be pursued. The major costs of international patenting can, therefore, be deferred for an additional 18 months, making a total of 30 months from the date when the New Zealand patent application was first filed.

Under the Patents Act 1953 only a registered Patent Attorney may draft and file patent applications as the agent of another. Given this fact, along with the technical and often complex nature of patents, they are dealt with by specialised patent attorneys.  A current list of registered patent attorneys is available online at: http://www.iponz.govt.nz/search/cad/DBSSITEN.Main

Early specialist advice from a patent attorney should be obtained, not just to ascertain whether patent protection is available but also to check whether a new idea or solution may infringe an existing patent. Further, given the increasingly international nature of business today, consideration may need to be given to situation both locally and offshore, particularly in the USA.

Patent Law Reform

During 2000, the Ministry of Economic Development (previously the Ministry of Commerce) continued its review of the Patents Act 1953. In October 2000 the Government agreed to the first of the series of proposals.  These proposals are apparently now being prepared.  For more information see the paper: “Reform of the Patents Act 1953”.  Review of the Patents Act 1953 Stage 3: Boundaries to Patentability available at:

http://www.med.govt.nz/buslt/int_prop/patentsreview/index.html

A new patents Bill is expected to be introduced in 2007.

For a useful and simple summary, see the Patent Protection Guide published on the IPONZ site at: http://www.iponz.govt.nz/search/cad/DBSSITEN.Main

In order to do an online patent search, go to: http://www.iponz.govt.nz/search/cad/DBSSITEN.main

IPONZ may be contacted at:

Telephone:Information line 0508 4 IPONZ –

or 0508 447 669 – National Calls Only

Address:Level 4, 330 High Street, Lower Hutt, New Zealand

Document and Information Service Centre, 17 Toop St, Seaview, Lower Hutt, New Zealand

Email:iponz@iponz.govt.nz

Post:PO Box 30-687, Lower Hutt, New Zealand

Websitehttp://www.iponz.govt.nz

4.COPYRIGHT

Copyright protects the original skill and effort of an author who has created an original work, along with a range of neighbouring rights for these works.  This enables the author to protect the expression of the work from copying by unauthorised third parties.

Copyright is governed by the Copyright Act 1994. New Zealand adheres to the Rome version (but not the Brussels revision) of the Berne Copyright Convention (1964), and is also a signatory to the Universal Copyright Convention (1964). These two treaties provide that citizens of member countries are afforded protection in other member countries in respect of work that may be copyrighted. Most of the industrialised countries are members.

Protected Rights

Copyright may reside (as of right and without registration) in any original literary, dramatic, musical or artistic work, sound recording, film, broadcast, cable program or typographical arrangement of published editions. Literary works include tables or compilations (which includes multimedia products and databases) and computer programs. Artistic works include graphic works, photographs, models, sculptures or collages, architectural works and works of artistic craftsmanship. Layout designs or integrated circuits are specifically excluded from the Copyright Act but are covered by the Layout Designs Act 1994 which provides copyright-style protection (see discussion below).

The Copyright Act specifies various circumstances in which reproduction of copyright material will not amount to an infringement, for example, if such material is used in fair dealing or for various research and educational purposes. It also stipulates that the making of an object in 3 dimensions which is copied from drawings included in a patent specification or a registered design, in relation to a patent or design that is no longer in effect, will not amount to an infringement of copyright. Further, there is a defence to copyright infringement of an artistic work that has been industrially applied for at least 16 years (25 years for works of artistic craftsmanship). The usual term of copyright (other than as indicated above) is the life of the author plus 50 years.

The Copyright Act also introduced moral and performers’ rights. These are a type of “pseudo-copyright”. In addition to the economic right (first owner of a copyright work) the author is given so-called moral rights. Such protection is independent of any economic rights the author might retain in a work.

Moral rights attach to authors of literary, dramatic, musical and artistic works and film directors (although generally the copyright of a film resides in the producer) whenever the work is exploited commercially, performed in public, broadcast, included in a cable service or when copies are issued to the public.

The moral right includes:

the right to be identified as the author or director of a work;

the right to object to derogatory treatment of a work;

the right not to suffer false attribution; and

the right to privacy in respect of certain films and photographs.

Infringement

There is a very broad range of activities which may constitute infringement of copyright in New Zealand. These include, in relation to a copyright work: copying, issuing copies to the public, performing, playing or showing the work in public, broadcasting the work, making an adaptation, and possessing or providing the means for making an infringing copy in the course of business; in the knowledge, or at least having reason to believe, that the work is an infringing copy.

As stated above copyright protection extends automatically to works originating in most overseas countries. Therefore, until the position has been checked, the direct copying of overseas works, even in the absence of any New Zealand patent or New Zealand design registration protection, should be advised against. Damages in copyright infringement actions can be severe, and may include additional damages.

Businesses, particularly those operating on or using the Internet, need to be aware of the risks involved in using or acquiring works of unknown or uncertain origin. As noted above, copyright attaches to all original works.  In the digital context such works may include written and electronic documents, software code, graphical images and, in some cases, distinctive formats or layouts of information, such as web pages.

Despite popular opinion to the contrary, the publication of material on the Internet does not remove the copyright.  Material should not be copied from the Internet without either the permission of the copyright owner or knowledge that the copyright owner has waived its rights.  It is arguable that an implied licence exists and allows users to browse the Web. The real issue is what type of licence can reasonably be implied.

It is emphasized, however, that copyright protection only protects against copying the actual form of an existing work in which copyright exists, i.e. it does not offer protection against a totally independent creation of even an identical work or against the copying of the idea or concept of the work, if a different form results.

.    Parallel Importation

Parallel importation occurs where a product that is manufactured overseas with the consent and authority of the owner of the rights in relation to that product is then imported into New Zealand without the consent of the owner of those rights in New Zealand.  Such goods often compete in parallel with the goods of the owner of the New Zealand rights.

Up until 19 May 1998, the importation of copyright material was prohibited.  However, this is no longer the case, following the introduction of the Copyright (Removal of Prohibition on Parallel Importing) Amendment Act 1998.  An object is now not an infringing copy and can be imported into New Zealand if it is made by or with the consent of the owner of the copyright in that object in the country of manufacture, or if the goods are legally manufactured in an overseas countries in which there is no copyright in the work (whether because the period of copyright protection in that country has expired, available steps to secure protection in that country were not taken, or the object is an industrially applied three dimensional work).

In 1999 the government signalled another change in thinking and said that parallel-importing bans for periods of up to two years would be introduced for new-release music recordings, motion picture titles, books, and software products.  In 1991 this was then scaled back to films, videos and DVD’s within 9 months of international release.

5.DESIGNS

Registered designs protect specific novel (new), features of shape or configuration and pattern or ornamentation which are applied to an article by an industrial process and which are visible to and can be judged by the eye. While patents protect the broad concept of a patentable invention designs protect the outward aesthetic appearance or “look” of a product.

In New Zealand, valid design registration is not possible where the new shape is dictated solely by the function which the article to which the design has been applied, is to perform. It is essential that a design application is filed before any public disclosure (including any offer for sale) of the design in New Zealand. Care needs to be taken to maintain the secrecy of the design prior to filing (see comments above in relation to patents).

Searches and Registration

It it is recommended that a search of the design register be conducted in order to identify any existing New Zealand design registration which could be infringed. Such a search also enables the identification of any existing New Zealand design registration which could hinder or prevent the granting of a design registration. Searches can be done online at:

http://www.iponz.govt.nz/search/cad/DBSSITEN.main

If the design appears to be one which is novel then an application may be filed at IPONZ. A sample Design Application Form is appended to this chapter. Once the design application has been filed, public disclosure and marketing of the design can take place without fear of invalidating any subsequently granted design registration.

An application must meet various formal requirements and be accompanied by drawings or photographs of the design. Once all formalities are completed the application is examined and a search for novelty is made. Details of the design become publicly available at the date of registration. Any corresponding overseas design applications should be lodged within six months of the New Zealand design application being filed. In this way the overseas design applications can claim priority from the New Zealand filing date.

The design registration can remain in force for a maximum period of 15 years from the date of registration which, in most cases, would be the actual date of filing of the design application. To extend the design registration for this full 15-year term requires the payment of renewal fees at 5 and 10 years.

Overseas Registration Protection

Most overseas countries provide design registration protection. Due to the absence of any copyright protection for industrialised three dimensional designs in Australia and many other countries, design registrations need to be obtained to secure adequate protection in these countries.

Infringement

The proprietor of a design registration has, among other things, the exclusive right in New Zealand to make, import, sell or hire any article in respect of which the design is registered, being an article to which the design or a design not substantially different from it has been applied. The proprietor also has the exclusive right to make anything for enabling any such an article to be made, whether in New Zealand or elsewhere. Those who infringe a design registration are liable for damages and other penalties.

6.LAYOUT DESIGNS

Layout designs are statutory rights granted to original layout designs for integrated circuits found in many modern electronic devices.

Layout designs and integrated circuits are provided a separate type of copyright-type protection (without registration) under the Layout Designs Act 1994. In broad terms, it mirrors similar legislation which exists in a number of other countries. A layout design right is retrospectively created for all original layout designs for integrated circuits provided their making involved a creative contribution by the maker, the layout was not commonplace at the time it was made, and in the case of a combination of elements and interconnection that are commonplace – the combination as a whole involved a creative contribution by the maker.

Protected Rights and Overseas Protection

Protection of “eligible layout designs” is restricted to those original layout designs made by an “eligible person”, or first commercially exploited in New Zealand or an “eligible country”. An “eligible country” is a country that is a party to a treaty or Convention to which New Zealand is also a party relating to the protection of layout designs, or a country that has or will have laws that give adequate protection to layout designs.

The term of the layout design rights protection is 10 years from the year it was first commercially exploited, provided this takes place within 10 years from creation. Otherwise, the term is 10 years from the end of the year in which it was created. Thus, the maximum term of protection is 20 years.

7.TRADE MARKS

A trade mark is a mark or “sign” which identifies one trader’s goods or services from those of others and distinguishes them from other goods/services in the marketplace. It is a “badge of origin” which, to the consumer, separates one product/service/person/company etc from another.

New Zealand has enacted new trade mark legislation, in the form of the Trade Marks Act 2002. It came into force as of 20 August 2003.  Trade Mark Regulations have also been promulgated. They contain many important provisions. This represents the first major overhaul of trade mark law for some 50 years. However, the new Act retains a number of existing features.

A trade mark is defined as any sign capable of:

•being represented graphically; and

•distinguishing the goods or services one from another.

A sign includes a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word.  In practical terms this means anything capable of recognition by human sense, including:

•words;

•devices

•logos;

•3 dimensional shapes;

•sounds; and

•smells.

A series of new “absolute” and “relative” grounds for objection to registrability now exit. Certain marks cannot be registered:

♣a sign that is not a trade mark;

♣a trade mark that has no distinctive character;

♣a trade mark that consists only of signs or indications that may serve, in trade, to                                 designate the kind, quality, quantity, intended purpose, value, geographical origin, time of         production of goods or of rendering of services, or other characteristics of goods or services; and

♣a trade mark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade.

This last point recognises that using their trade marks, traders should also ensure that they do not inadvertently allow them to become a generic name for the products or services concerned.  A trade mark must always be used in conjunction with a generic name for the products or services, and preferably, the trade mark should be identified as being a trade mark of the business in any literature. Accordingly, common name, in general public use, may be removed form the register on the basis it has become generic.

A number of other significant changes have been made. The first is that the distinction between Parts A and B of the register has been abolished. Multi-class applications can now be lodged. In terms of classes, the appropriate classification of goods and services is determined according to the Nice Agreement on the International Classification of Goods and Services.

Well-known marks receive greater protection and dilution of such marks may now be prevented, where the use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.

The use of trade marks in comparative advertising is now expressly permitted, as long as it is in accordance with so called “honest practices”.

Indigenous rights are expressly catered for. A Maori advisory committee advises the Commissioner of Trade Marks on whether a trade mark is considered to be offensive. Other marks, that are likely to offend “significant sections” of the community, may now also be rejected.

Infringement

Infringement occurs when an identical mark is used on identical good or services or where a similar mark is used on similar goods or services, if that use would be likely to deceive or confuse.  It may also occur if the mark is identical with or similar to the registered trade mark where the trade mark is well known in New Zealand and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.

The period of non-use, i.e. after which a mark may be removed from the register, has been reduced from five to three years – in line with countries like Australia.

Criminal offences for importing and selling counterfeit products have been increased. A fine of up to $150,000 can now be imposed.or services of 1 person

Search and Registration

The registration of a trade mark is not essential but without a registration a proprietor must rely on common law rights and remedies.  Definite statutory rights are granted to registered proprietors, making registration desirable in most cases. Any commercially important trade marks should be protected by registration, locally and in important export markets.

A search should preferably always be done before a new trade mark is launched to avoid infringement of any existing trade mark registration.

In order to search for or lodge a trade mark application, go to the IPONZ site at: http://www.iponz.govt.nz/search/cad/DBSSITEN.Main

In order to lodge an application an “Application Questionnaire” will need to be completed online. An applicant will need to:

•Supply its reference, e-mail address and password;

•Supply information as to whether the application is for a series of similar trade marks;

•Advise as to whether the application is for a colour, sound, shape or smell. (a representation of the trade mark will be required if the mark is other than in black and white plain block letters);

•Choose the kind of application it is making;

•Advise whether priority is claimed under the International Convention (including the filing date and country in which the basic application has been filed).

•Advise as to whether trade mark registration is required in more than one class and if so which classes.  It is important to choose the correct class and specification of goods or services.  See the classification of goods and services below

8.PASSING OFF

Passing off is tortious remedy that prevents one from “passing off” his/her goods, services or persona as those of another. It typically describes situations where one trader disguises its goods or services or persona as those of another, whether by adopting the other’s product/service name, style of packaging, or decorative packaging elements, and so “passes off” the goods/services as those of its rival. Passing off can damage a business in three ways:

•By diverting trade from one business to another

•By injuring a trading reputation, (the quality of whose product/service is often superior or different to that of the business doing the imitating); and

•By the injury which is inherently likely to be suffered by any business when on frequent occasions it is confused by customers or potential customers with a business owned by another proprietor or is incorrectly thought to be associated or connected with that business.

Elements of Cause of Action

The plaintiff needs to prove:

•That there was some reputation or goodwill attached to its name, mark or get-up;

•That the defendant had used the same or deceptively similar name, mark or get-up so as to confuse or deceive the relevant public or if unrestrained was likely to do so; and

•Damage had been or was likely to be caused to the plaintiff’s business, reputation or goodwill.

It is not necessarily a requirement that both parties are engaged in a similar field of activity. The existence or otherwise of a common field of activity is merely one pointer towards the probable presence or absence of deception. Passing off can also occur in reverse, when the defendant passes off the plaintiff’s goods or services as its own.

A plaintiff in a passing off action must establish the likelihood that it will suffer loss as a result of the defendant’s conduct. The most usual way in which loss occurs is through the loss of sales, caused as a result of consumers confusing the defendant’s product for the plaintiff’s. Where, however, there is no direct competition between the plaintiff and the defendant, there will be no immediate loss of sales. The plaintiff may nevertheless suffer in the long run as a result of the dilution and the value of its name, mark or getup.

Domain Names

These are a new type of IP right. The courts in New Zealand have been willing to uphold rights in domain names and to require cybersquatters to either cancel their registered domain names or to hand them over to the plaintiff. In this sense, domain names have been treated as another species of IP right, even if technically speaking their legal status has been a bit unclear.  The usual remedy has been under the head of passing off.

In the case of Oggi Advertising Limited v McKenzie & Ors [1999] 1 NZLR 631, the High Court granted an interlocutory injunction, ordering the defendant to return the domain name <oggi.co.nz> to the plaintiff. In New Zealand Post Ltd v Leng (1998) 8 TSLR 502, [1999] 3 NZLR 219, the plaintiff was similarly successful and was granted an interim injunction, restraining the defendant from using an Internet web site using the domain name <nzpost.com>, even thought the domain name was registered through Network Solutions in the USA. This approach was followed in Qantas Airways v The Domain Name Company Limited (2000) 1 NZECC (digest) 70-005.

The approach in New Zealand is in line with early decisions in other jurisdictions, These cases do not resolve the issue of whether a proprietary right exists in a domain name, but do show that the courts will order the return of a domain name where a valid claim of passing off exists.

Another issue that will become important in the future is parody and criticism. The problem is exemplified by the plethora of “Sucks” sites.  These sites are designed to vent people’s prejudices and concerns, i.e. to say that a particular company “sucks”. Essentially, if a “sucks” site uses a company’s trade mark for purposes of criticism and for non-commercial purposes, it may not necessarily to amount to passing off or breach of the Trade Marks Act.  That is, so long as these rules are met and consumers are not confused or misled into believing that the site is affiliated or sponsored by the trade mark owner.  The important thing is that Internet users, on first entering the site, should be able to ascertain that it is a criticism page done by a third party and not one put out by the target company itself.  While a disclaimer may assist, it will normally, in and of itself, not be sufficient to avoid deception.

Since late 1999 the ICANN Dispute Resolution Policy has been available to resolve domain names disputes involving cybersquatting. Broadly, this is the registration and use of a trade mark or name confusingly similar to a trade mark in a domain name, with bad faith intent to profit from the activity and without just cause.

In order to be successful under the UDRP, the complainant must prove that:

•the domain name registered by the other party is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

•the other party has no legitimate rights in respect of the domain name; and

•the domain name has been registered and used in bad-faith.

Whole a number of organizations have jurisdiction to determine disputes, the bulk are handled through the World Intellectual Property Organisation (WIPO)’s Arbitration and Mediation Centre in Geneva.  The average hearing time is around 35 days from filing of the complaint.  The procedure is relatively simple and inexpensive. The WIPO Domain Name Dispute Resolution Service is accessible online at: http://arbiter.wipo.int/domains/

In terms of the local situation, the Internet Society of New Zealand (InternetNZ) has set up a working group to formulate a policy as to whether the New Zealand country code should have an alternative dispute resolution system for domain name disputes and, if so what form it should take. The working group has been looking at options for some time now but a proposal is expected at some point.

9.THE FAIR TRADING ACT 1986

The Fair Trading Act is a piece of consumer legislation designed to ensure that people engaged in business trade fairly and do not mislead and deceive the public.

The Act has a wide ambit, covering all companies, bodies, corporate partnerships and individuals. In addition, it binds the Crown insofar as it engages in trade. This Act is more fully discussed in a separate chapter of this work.

The Act is given extended coverage to include the engaging and conduct outside New Zealand by any person, resident or carrying on business in New Zealand to the extent that the conduct relates to the supply of goods or services or the granting of interests in land within New Zealand. Thus, the jurisdiction of the Act will cover, for example, misleading or deceptive advertising abroad where the goods or services are to be supplied to New Zealand.

Elements of Cause of Action

In determining whether there has been a relevant misrepresentation, the defendant’s conduct as a whole must be considered. In determining whether conduct is misleading or deceptive, the approach is similar to that adopted in a passing off action.  That is, the court itself must determine this question and apply an objective test. Section 9 requires that the conduct, of which a complaint is made, must mislead or deceive or be likely to mislead or deceive. This involves showing a causal link between the conduct complained of when viewed as a whole and the deception or misleading.

Section 9 applies to trade names and business names which contain a descriptive element. It also applies to similarity of getup or of product packaging or design. The Act deals with goods and services and prescribes a range of false representations, the breach of which gives rise to both criminal and civil sanctions.

10.GEOGRAPHICAL INDICATIONS •

A geographical indication points to a specific place or region of production that determines the characteristic qualities of the product that originates from that area. The product must derive its qualities and reputation from the particular place. If this is the case a “link” may exist between the products and its original place of production.

An appellation of origin is a particular kind of geographical indication, used on products that have a specific quality that is exclusively or essentially due to the geographical environment in which the products are produced. The concept of geographical indication encompasses appellations of origin.

A number of treaties administered by the World Intellectual Property Organization (WIPO) provide for the protection of geographical indications.  For more information go to the WIPO site at:

http://www.wipo.int/about-ip/en/about_geographical_ind.html

Scope of the Geographical Indications Act 1994

The Geographical Indications Act 1994 was passed in 1996. The Act is available online at: http://www.legislation.govt.nz/browse_vw.asp?content-set=pal_statutes

The Act provides for the registration of geographical indications for “specific goods” eg “Canterbury” for lamb and “Marlborough” for wine. A company or person who uses a registered or protected geographical indication on goods which do not originate from that area will be deemed to have breached s9 of the Fair Trading Act.

It would not be a defence to include the true geographical origin of the goods if the wrong one is used or to refer to the protected geographical indication and translation or to accompany the claim by words such as “kind”, “type”, “style”, “imitation” or any similar word. It is anticipated that as certain specific areas become known as producing premium products, the right to claim on a label such a geographical origin will become a very valuable right.

The Act is still not yet in force. The Ministry of Economic Development (MED) site has a useful summary of the position, available online at: http://www.med.govt.nz/buslt/int_prop/info-sheets/geog-ind.html

The MED explains that New Zealand complies with its international obligations to protect Geographical Indications through existing remedies. Reference is made to cases such as Comite Interprofessionnel du Vin de Champagne v Wineworths Group Limited [1991] 2 NZLR 432, the “Champagne” case, where the court found that the word “champagne” was distinctive in New Zealand for the French product and as a result, it was deceptive for other traders to seek to attach themselves to that reputation by using the word champagne to describe sparkling wine made outside the Champagne region in France.

For further information contact:

Address:Intellectual Property Policy Group

Regulatory and Competition Policy Branch

Ministry of Economic Development

33 Bowen Street

PO Box 1473

Wellington

Phone:04-472 0030

Fax:04-473 4638

Email:info@med.govt.nz

11.CONFIDENTIAL INFORMATION: BREACH OF CONFIDENCE•

Over time the courts have developed a set of rules to prevent the misappropriation and improper use, without permission, of “confidential information”.

Elements of Cause of Action

There is no commonly recognised definition of confidential information, the courts having showed a clear reluctance to fetter themselves when determining what information can be protected. It is available to protect a wider range of secrets than trade secrets since many confidences are not related to any form of business activity. Confidential information is often distinguished from “knowhow”, but it should be understood that the latter term is used in a number of ways and has no uniform legal meaning. To the extent that information described as knowhow falls within the definition of confidential information, it is likely to be protected by the action of breach of confidence.

The test for establishing a breach of confidence is conveniently summarised in Coco v A N Clark (Engineers) [1969] RPC 41 at 47:

•The information disclosed must have had “the necessary quality of confidence” about it;

•The information must have been imparted in circumstances importing an obligation of confidence; and

•There must be an unauthorised use of that information to the detriment of the party communicating it.

In assessing whether information obtained by an employee during the course of their employment has the necessary degree of confidence, the courts have traditionally recognised a distinction between information of the type which an employee would be likely to learn in similar employment elsewhere, and information which they would only receive from the particular employer who employed them. The former information does not have a sufficient character of confidence while the latter does. The obligation of confidence will exist until the information confided has reached the public domain. At that point, it is free for all to use.

Defences include disclosure in the public interest, equitable defences, innocent use by third parties and purloined information. The usual forms of relief including damages, and an injunction, are available.

12.PLANT VARIETY RIGHTS

This is a form of registered protection for new types of plant varieties which are sufficiently distinct, uniform and stable.

Application for Protection of Plant Variety Rights

A system of protection for plant varieties, known as “Plant Variety Rights (PVRs), is administered by the Christchurch-based Plant Variety Rights Office under the Plant Variety Rights Act 1987.

Contact:

NamePlant Variety Rights Office

TelephoneInformation line (64) 3 325 6355 (Plant Variety Rights Office)

PostPlant Variety Rights Office, P.O. Box 130,Lincoln,CanterburyPlant Variety Rights Office, Canterbury Agricultural and Science Centre, Gerald Street, Lincoln, Canterbury

Websitehttp://www.pvr.govt.nz

New Zealand is a member state of the International Union for the Protection of New Plant Varieties (UPOV), adhering to the 1987 UPOV Convention.

Under the Act, the breeder of a plant variety may obtain a grant of PVR if the variety is new (it should not have been sold earlier than certain specified times before application is made), distinct, uniform and stable. Application must be made to the PVR Office. A sample Application Form is appended to this chapter, along with a sample Technical Questionnaire, which needs to be completed.

The application must:

•Be accompanied by a quantity of seed (if any) of the relevant variety

•Be completed and signed by or on behalf of the applicant

•Nominate an address for services in New Zealand; and

•Be accompanied by the application fee

Following application, an examination is carried out to determine whether the candidate variety meets prescribed criteria. The examination normally involves a growing trial of the variety conducted in New Zealand. Notice of applications, grants and other matters concerning PVRs, are published in the quarterly New Zealand Plant Variety Rights Journal. A grant of a PVR gives the breeder exclusive rights of commercialisation of the variety for 20 years, or 23 years in the case of woody plants. The breeder or owner is entitled to obtain relief against anyone infringing the PVR. The usual remedies (i.e. an injunction, damages etc). are available, but few cases have gone to trial, so there is little precedent to go on at the moment.

A useful summary of the position can be found in a document: The Guide to Plant Variety Rights, issued by Plant Variety Rights Office in January 2002, available online at: http://www.pvr.govt.nz/info-guide.htm

13.COMPANY NAMES

A system whereby company names may be registered at the Companies Office.

Background information on registering a company is available through the Companies Office online at: http://www.govt.nz/en/search/topic-service-single-record/?urn=urn:nzgls-sn:000351:0000092

Scope and Effect of Company Name Registration

Contrary to common wisdom registration of a company name does not effectively protect a trading name. Company name registration is not the same as trade mark registration. Once a company is registered, no other company can be registered with the same name. However, quite similar names, perhaps differing by only a single word, can be registered by other companies. Also, it should be noted that not all companies or businesses trade under a registered company name. Some use a quite different “trading name”.

There is nothing in a company registration to stop a competitor from opening up and using practically the same name. Use of a validly registered company name could violate a rival trader’s registered or common law trade mark rights, and a company could be forced to change the name they use.

When you register a company for a client, you should also:

•Check that no-one else has registered or applied for a trade mark that will conflict with the company name, and

•Where appropriate protect the company name by a trade mark registration.

Contact: Companies Office

Telephone:0508 266 726

E mail:info@companies.govt.nz

Post:Private Bag 92061, Auckland Mail Centre, Auckland

Website:http://www.companies.govt.nz

14.INTELLECTUAL PROPERTY: THE INTERNATIONAL CONTEXT

INTERNATIONAL TREATIES

One of the most significant and distinctive features of intellectual property is its ability to transcend national boundaries.  For New Zealand companies with overseas interests a range of international conventions and treaties are important to ensure that locally created IP rights are recognised internationally.

The greatest international influences today are organisations such as WIPO (World Intellectual Property Organisation) See: http://www.wipo.int/ and the TRIPS Agreement, forming part of the Uruguay Round of GATT. Since the completion of the Uruguay Round of GATT and the signing of the agreement on Trade Related aspects of Intellectual Property, international IP law harmonisation has increased markedly. This led to a series of law changes in 1994/5 to bring our laws into line with these developments.

The situation is complex and constantly evolving. However, a few of the key conventions/treaties to which New Zealand belongs are:

Copyright

The international dimension of copyright was realised at a relatively early stage. In 1886 the International Convention for the Protection of Literary and Artistic Works, which is more familiarly known as the Berne Convention, was signed. New Zealand has been a member since 1928. New Zealand is also a member of the Universal Copyright Convention.

WIPO Copyright Treaty

This was adopted by a Diplomatic Conference on 20 December 1996.

Its goal is to develop and maintain the protection of the rights of authors in their literary and artistic works. The treaty recognizes the need for international rules in order to provide adequate solutions to the questions raised by new economic, social, cultural and technological developments and in particular the impact of the development and convergence of information and communication technologies on the creation and use of literary and artistic works.

Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms

This convention was adopted on 29 October 1971 and is designed to control the unauthorized duplication of phonograms ie records and to protect the interests of authors, performers and producers of phonograms.

WIPO Performances and Phonograms Treaty

This treaty was adopted by a Diplomatic Conference on 20 December 1996. Its object is to develop and maintain the protection of the rights of performers and producers of phonograms.

Patents, Designs and Trade Marks

The principal international IP treaty, the Paris Convention for the Protection of Industrial Property, provides for the protection of various forms of industrial property such as patents, design and trade marks. The Convention requires member countries to grant to the nationals of other member countries the same rights and remedies as their own nationals enjoy.

Patent Co-operation Treaty

This provides for international filing of patent applications. Other treaties, arrangements and understandings cover Plant Variety Rights, Geographical Indications, Circuit Layouts etc. They are too numerous and varied to deal with here.

Confidential Information

In terms of international treaties, confidential information has, until recently, received little recognition.  The only possible exception was article 10bis of the Paris Convention, which provides nationals of the Paris Union with “Effective Protection against Unfair Competition”.  The TRIPs Agreement was the first attempt to deal with confidential information expressly and in explicit terms.

Article 39 clearly gives Member States of the WTO a broad margin within which to protect trade secrets.

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