Depending on the nature of the intellectual property right you own and the nature of the alleged infringement, various New Zealand enforcement agencies may be able to assist.
Before contacting any of these agencies, it’s recommended that you consult with either a patent attorney or a legal professional specialising in intellectual property.
Read more about enforcing your intellectual property rights on the Ministry of Business, Innovation and Employment (MBIE) website.
Civil enforcement and existing criminal offences and penalties
The Trade Marks Act 2002
Under the Trade Marks Act 2002 the courts have a wide range of civil remedies available to them (under the respective Act and under common law) to compensate aggrieved owners of registered trade marks for infringement of their trade marks. These include damages, injunctions, orders to account for profits, and orders to deliver up infringing goods to right holders.
The Trade Marks Act 2002 also contains criminal offences for the infringement 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 trade mark counterfeiters.
Prosecution Policy Guidelines under the Trade Marks Act 2002
The Chief Executive of the Ministry of Business, Innovation and Employment (MBIE) is empowered to prosecute the offences of manufacturing, importing and selling counterfeited goods prescribed in the Act. The guidelines set out the approach that MBIE, through IPONZ, intends to take in investigating and prosecuting those offences, and how IPONZ will work with other agencies that have a role in trade mark enforcement, particularly NZ Customs which also has prosecution powers.
Prosecution policy guidelines under the Trade Marks Act 2002 and the Copyright Act 1994
- New Zealand's regime for protecting trade mark and copyright owners from the importation of counterfeit or pirated goods is set out in the Trade Marks Act 2002 and the Copyright Act 1994. The Chief Executive of the Ministry of Business, Innovation and Employment (MBIE) is empowered to prosecute the offences of manufacturing, importing and selling counterfeited goods and pirated works prescribed in those Acts. These guidelines set out the approach that MBIE, through the Intellectual Property Office of New Zealand (IPONZ) intends to take in investigating and prosecuting those offences, and how IPONZ will work with other agencies that have a role in trade mark and copyright enforcement, particularly NZ Customs which also has prosecution powers.
- These draft guidelines are intended to guide and inform rights holders and the public. They are a living document and may be revised from time to time in accordance with MBIE's enforcement objectives and priorities. They are not exhaustive or legally binding, and are not a substitute for the law.
Legal protection of intellectual property rights
- A trade mark is a unique identifier (typically a name, logo, symbol, slogan, image or a combination of these) that enables a business to easily distinguish its goods and services from those supplied by other businesses. In other words it is a "badge of origin". It is used in marketing to enable consumer recognition that goods and services of a given quality originate from a particular business.
- The Trade Marks Act provides a mechanism for businesses to register their genuine trade marks and protect them from unauthorised copying, i.e. counterfeiting and other forms of brand piracy.
- Similarly, the Copyright Act gives the creators of a wide range of artistic, intellectual or other creative forms ("works") the rights to control who may copy, perform, adapt, or otherwise use or profit from their own creations, for a certain period of time.
- In passing these laws, the New Zealand government has recognised that there is a public interest in protecting the rights of business people, authors and artists to their own intellectual property. Unauthorised use may:
- deny rights holders the legitimate proceeds of their work,
- discourage innovation and creativity,
- deceive consumers as to the origin and quality of goods,
- cause health and safety risks (e.g. counterfeit pharmaceuticals or defective electrical equipment),
- provide a source of funding for organised crime and terrorist groups.
- Also, there is growing acknowledgement that counterfeiting and piracy are global problems in need of global solutions. New Zealand has signed up to certain international treaties and agreements about protecting intellectual property rights. The Trade Marks and Copyright Acts reflect these treaties and help New Zealand to fulfil its international obligations and contribute to global solutions.
- The protection of intellectual property rights also accords with MBIE’s statement of intent, and in particular with its work in enabling businesses and people to participate with confidence in markets.
- MBIE, through IPONZ, will consider each complaint on its own merits when making the decision to bring criminal proceedings. In making the decision whether or not to prosecute, MBIE must act fairly and consistently. MBIE is also mindful that not all offending should result in prosecution action, that prosecution decisions must take into account matters such as the public interest, the strength of the available evidence, the potential cost of the investigation or prosecution and the availability of funds, competing claims on those funds by other cases and the comparative importance of each case in the context of MBIE's enforcement objectives.
- One of the key considerations will be whether any other available remedies have been exhausted or are not practically available. Criminal investigation and prosecution is not a substitute for civil remedies, and there must be a compelling public interest in order for MBIE to take prosecution action.
- In all cases, MBIE will make an independent decision to provide instructions to the relevant Crown Solicitor to proceed with a prosecution, which will be guided by these prosecution guidelines, and will conform with the Solicitor-General’s Prosecution Guidelines.
- In making prosecution decisions, MBIE will have regard to the overarching principles of the prosecution policy of the Ministry of Business, Innovation and Employment.
- From time to time MBIE may concentrate on a particular area or areas of offending by way of focussed programmes. The aim of such focussed programmes would be to bring about compliance and provide deterrence in particular areas of concern.
Is there sufficient information / evidence?
- When MBIE receives a complaint or referral, it will first consider whether there is sufficient information to indicate that an offence may have been committed. MBIE will need to consider whether there is credible evidence that an offence has been committed, whether the person who has allegedly committed it is identified or is likely to be identifiable, and whether there is one or more rights holder/s who are identified and willing to give evidence.
- If an investigation proceeds to the point of considering prosecution, MBIE will need to assess whether:
- the evidence identifies a particular offender,
- the evidence is credible and whether witnesses are reliable,
- there is sufficient evidence that is legally admissible,
- there is an objectively reasonable prospect of a conviction on the evidence,
- the available evidence is capable of proving the offence beyond reasonable doubt.
Public interest criteria
- If there is sufficient evidence to support a prosecution, MBIE must also consider whether it is in the public interest for a prosecution to proceed. Our criteria for this fall under three broad headings:
- the extent of the harm,
- the seriousness of the conduct,
- other public interest factors.
The extent of the harm
- Generally, the more significant the harm that has been, or is likely to be, caused by the alleged offending, the more likely it is that MBIE will make a decision to prosecute. The key criteria are:
- whether the alleged offending poses a risk to the health and/or safety of the public (e.g. counterfeit pharmaceuticals, cosmetics or foodstuffs, counterfeit safety equipment),
- whether there is financial loss to the public (e.g. overpriced counterfeits, replacement costs of defective counterfeits),
- whether there may be damage to national or regional economies,
- whether a large number of consumers are likely to be affected (e.g. high volumes of counterfeit product, high number of sales outlets),
- the extent of financial loss to the rights holder (e.g. direct costs, loss of market share, damage to reputation or goodwill),
- the number of rights holders affected (e.g. distribution or sale of multiple counterfeit brands).
The seriousness of the conduct
- Generally, the more serious the conduct, the more likely it is that MBIE will commence an investigation or continue with enforcement action. The key criteria are:
- is there repeat offending or a pattern of offending?
- is the offending intentional or calculated?
- has the alleged offender ignored cease and desist letters or other warnings in the past?
- is there an indication of organised crime being involved?
- can the breaches be remedied?
- has the alleged offender been co-operative and /or attempted to remedy the breaches?
- are there any aggravating or mitigating factors?
- is a conviction likely to result in a significant penalty?
- is the alleged offender a ringleader or organiser of the offence?
Other public interest factors
- As with any enforcement agency, MBIE must have regard to a number of factors in the wider public interest, such as:
- whether other available remedies have been exhausted or are not practically available, including civil remedies available to rights holders under the relevant legislation,
- whether enforcement is likely to clarify an uncertain area of the law, or otherwise achieve one of MBIE's enforcement objectives,
- the potential deterrent effect of a conviction,
- the cost-effectiveness of taking prosecution action,
- whether the conduct is of a type that MBIE wishes to target,
- whether enforcement would accord with the purposes of the legislation, in particular to address counterfeit activity in relation to trade marks and breaches of copyright in New Zealand.
Choice of charges
- Once a decision to prosecute has been made, a choice as to which charges should be laid should reflect the criminality of the defendant’s conduct. In making a decision as to which charges should be laid, MBIE will have regard to any advice of the relevant Crown Solicitor.
Disclosure and appeals
- MBIE will adhere to the Ministry Guidelines in respect of disclosure under the Criminal Disclosure Act, and in respect of the process for appeals.
Working with other enforcement agencies
- The NZ Customs Service and Police also have a role in enforcing intellectual property laws. Some of the information that may be obtained during IPR investigations may also be of interest to other enforcement or regulatory agencies that deal with matters such as product safety (consumer products, pharmaceuticals, food), organised crime, and money laundering.
- MBIE will share information with such agencies (within the limits of the law) and will refer any complaints that it considers would be more appropriately dealt with by another agency.
- MBIE will publicise the outcomes of every prosecution unless there are legal reasons (or other compelling reasons) not to do so. MBIE may also publicise the outcome of investigations that do not result in prosecution, in appropriate cases. Publicity is intended to raise awareness of intellectual property issues, to inform rights holders and the public, and to act as a deterrent to other potential offenders.
Evaluation and review
- These guidelines will be reviewed on a regular basis, and adjusted according to changes in MBIE priorities and emerging trends or issues of concern.
- In order to inform such reviews, MBIE will undertake regular evaluations of its prosecutions, and their costs and benefits. It may seek the views of outside agencies or interested parties in undertaking such evaluations.
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 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 put in place border enforcement measures in accordance with our obligations under the TRIPS Agreement and the CPTPP Agreement. These measures allow trade mark owners and licensees to request the detention of suspected infringing goods that are either being imported or exported while they are subject to the control of the New Zealand Customs Service. Border enforcement measures do not, however, apply to goods imported or exported 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. When a notice has been lodged, Customs is able to detain the suspected infringing goods.
Customs can detain suspected infringing goods subject to a valid notice for a period of ten working days. Notices are valid for a period of up to five years, or until trade mark registration expires or is otherwise revoked, cancelled or declared invalid. Enforcement of notices may be suspended by Customs under certain conditions, including when information provided with a notice becomes outdated (for example, if the trade mark owner has failed to notify Customs of a change of address).
The right holder must complete a form of indemnity and pay a $5,000 bond 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 assess whether the goods are infringing and if legal action should be taken against the importer. If a right holder does not commence proceedings within the ten-day period, Customs is required to release the goods.
Note that Customs may also detain suspected infringing goods without accepting a notice from either the trade mark owner (or licensee) for a period of three working days. In such circumstances, Customs will advise the trade mark owner that the goods have been detained and invite the trade mark owner to file a notice as described above. If the trade mark owner does not file a notice within the three day period, Customs must release the goods. If the trade mark owner’s notice is received by Customs within the three day period, the suspected infringing goods will be further detained and the border control measure will apply to the goods as if a notice had been received by Customs prior to the goods coming into their control.
For further information, visit the New Zealand Customs Service website.