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DOING BUSINESS IN NZ: Intellectual property

01 June 2015

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New Zealand’s intellectual property laws are derived historically from English legislation and common law but have been influenced and reformed in recent years pursuant to the TRIPS Agreement and New Zealand’s World Trade Organisation obligations.

Copyright

The Copyright Act grants exclusive rights to:
  • copy a work (including, in relation to some works, storing the work in any medium by any means)
  • issue copies of the work to the public
  • play, perform or show certain works in public
  • “communicate” the work
  • make an adaptation of the work, and
  • authorise another party to do any of the above.
Works that can be subject to copyright include:
  • literary works (including computer programmes)
  • dramatic works
  • artistic works (which may include drawings, moulds, dyes etc for utilitarian items such as machinery or clothing)
  • musical works
  • sound recordings, and
  • films and broadcasts, including over the Internet.
To qualify for protection, a work must be “original”.
In accordance with the Berne Convention (to which New Zealand is a signatory) copyright is established as soon as the work is created.  A work does not need to be registered to gain protection. 
The copyright in literary, dramatic, musical and artistic works generally lasts for the life of the author plus 50 years.  Unlike in some countries, there is no bar in New Zealand copyright law against protection for industrially applied artistic works.  However, the copyright term for industrially applied three-dimensional works is usually 16 years.  Protection for industrially applied “works of artistic craftsmanship” lasts for 25 years.  For other works, copyright generally lasts for 50 years. 
Public performances of various kinds may also be the subject of separate protection given in certain circumstances to performers (but not in the performance of sporting activities).  In addition, the Copyright Act protects “moral rights” which, (depending on the circumstances) may include:
  • a right to be identified as the author
  • a right to object to derogatory treatment of a work, and
  • a right against being falsely attributed as the author of a work.
Under New Zealand law, moral rights are not assignable.  They can, however, be waived.

Patents

The Patents Act 2013 brings New Zealand generally into line with our major trading partners. 
The grant of a patent allows the owner to prevent others from exploiting (e.g. by making, using or selling) a patented invention for 20 years from the date of the patent. 
An exception allows for third parties to do things “reasonably related” to the development and submission of information required under New Zealand law, or the law of another country, regulating the exploitation of the product. 
A patent will be granted where the Commissioner of Patents is satisfied “on the balance of probabilities” that the application meets the requirements under the legislation.  The most important of these are that the invention meets a universal or absolute novelty test and involves an inventive step (meaning that it is not “obvious”).
Certain things are excluded from patentability, including methods of medical treatment of human beings by surgery or therapy, a method of diagnosis practised on human beings, and inventions the commercial exploitation of which would be contrary to public order or morality.
“Embedded software” may be patented.  “Swiss-type” patent claims in the pharmaceutical area are possible.
Various procedures are open to third parties wishing to object to or oppose a patent, both before and after grant.  These include asking for a re-examination.

Registered designs

New and original industrial designs are registrable under the Designs Act 1953 if their shape, configuration, pattern, or ornamentation has visual appeal.  However, because the Copyright Act protects industrially applied artistic works and useful articles in New Zealand, some businesses are content to rely on the protection given by copyright law only (although there are advantages to gaining registered protection under the Designs Act). 
Under the Designs Act, the period of protection is for an initial five years, with rights of renewal for two further five-year periods.

Trade marks

Trade marks may be registered under the Trade Marks Act 2002 (for goods and services).  Once a trade mark is registered, the proprietor has the exclusive right to use the trade mark in relation to the goods and/or services for which it was registered. 
The Act permits comparative advertising involving registered trade marks, except where the advertisements are “unfair” to the reputation of the mark.  The Act also contains “anti-dilution” provisions to prevent unfair use of well-known registered marks in relation to goods and services which are dissimilar to those for which the mark is registered.  Marks involving Māori language or symbols must be referred to a special committee for consideration before they are eligible for registration.
The Madrid Protocol allows for a multi-country trade mark application process.

Company names

A company name will not be approved if it is identical (or nearly identical) to an existing company name.  Registering a company or reserving a company name gives no right to use the name as a trade mark, and provides no defence to infringement of third party trade mark rights.  (This is also the case in respect of domain names.)

Domain names

Regional domain names, such as “.co.nz” and “.govt.nz”, are registrable in New Zealand.  New Zealand courts have protected businesses against “cyber squatting” in some instances.  In so doing, they have relied on principles developed in English and United States courts.  There is also now a dispute resolution service operated by the Domain Name Commission, similar to the UK Nominet service.

Passing off

The law of passing off may also be invoked to protect business goodwill and is frequently used for the protection of trade marks (whether or not registered), names, logos, packaging designs and shapes.  The principles are similar to those that have been developed in English and Australian common law.

Parallel importation

Importers can import lawfully made goods from foreign countries in commercial quantities without infringing the copyright of the “official” distributor in New Zealand, or of the overseas manufacturer.  However, the prohibition against importing pirated goods, made without the copyright owner’s consent, remains in force. 
The parallel importation of films is restricted for a period of up to nine months after their initial international release.

Confidential information

New Zealand law protects confidential information relating to trade secrets, such as business methods and industrial processes.  As with passing off, the principles are similar to those that have been developed in English and Australian law.  Non-disclosure agreements (NDAs) are useful for providing contractual rights to prevent disclosure of confidential information and can be used to supplement common law rights.

We make every effort to ensure the accuracy of the information provided but it should not be relied upon as a basis for making business decisions as circumstances, business conditions, government policy and interpretation of the law may change.