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.

MBIE prosecution policy under 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 as well as copyright infringement, as prescribed in the Trade Marks Act 2002 and the Copyright Act 1994. MBIE’s prosecution policy guidelines set out the approach that MBIE, through IPONZ, takes in investigating and prosecuting those offences, and how MBIE will work with other agencies that have a role in trade mark enforcement - particularly the New Zealand Customs Service, which also has prosecution powers.

Introduction

1. New Zealand's regime for protecting copyright owners and trade marks from the importation of pirated or counterfeit goods is set out in the Copyright Act 1994 and 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 and pirated works prescribed in those Acts. These guidelines set out the approach that MBIE, through the Intellectual Property Office of New Zealand (IPONZ) takes 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.

2. These 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.

Legal protection of intellectual property rights

3. The Copyright Act 1994 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.

4. 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.

5. The Trade Marks Act 2002 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.

6. In passing the Copyright Act 1994 and the Trade Marks Act 2002, the New Zealand government has recognised that there is a public interest in protecting the rights of persons 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.

7. 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.

Prosecution criteria

8. 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.

9. 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.

10. 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.

11. In making prosecution decisions, MBIE will have regard to the overarching principles of MBIE’s prosecution policy.

12. 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.

Evidential criteria

Is there sufficient information/evidence?

13. 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 that are identified and willing to give evidence.

14. 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

15. 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. The criteria for this falls under three broad headings:

• the extent of the harm;
• the seriousness of the conduct;
• other public interest factors.

The extent of the harm

16. 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

17. 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

18. 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 breaches of copyright and counterfeit activity in relation to trade marks in New Zealand.

Choice of charges

19. 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

20. MBIE will adhere to the Ministry Guidelines in respect of disclosure under the Criminal Disclosure Act 2008, and in respect of the process for appeals.

Working with other enforcement agencies

21. The New Zealand Customs Service and Police also have a role in enforcing intellectual property laws. Some of the information that may be obtained during Intellectual Property Right 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.

22. 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.

Publicity

23. 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

24. These guidelines may be reviewed on a regular basis, and adjusted according to changes in MBIE priorities and emerging trends or issues of concern.

25. 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.

Extension of New Zealand trade mark protection to the Cook Islands, Niue and Tokelau

The Trade Marks Act 2002 does not expressly provide for the extension of New Zealand trade mark protection to the Cook Islands, Niue and Tokelau. However, through operation of the laws of Niue and Tokelau, trade marks registered under the Trade Marks Act 2002 in New Zealand are considered protected in these countries/territories. There is no extension of New Zealand trade mark protection to the Cook Islands¹.

Trade marks registered in New Zealand under the Trade Marks Act 1953 (repealed) continue to be protected in the Cook Islands, Niue and Tokelau.²

The table below summarises IPONZ’s understanding of the current position³ with respect to the extension of protection for trade mark registration sought in New Zealand.

At this time, New Zealand trade marks registered as a designation under the Madrid System do not extend to the Cook Islands, Niue or Tokelau. Therefore, queries as to protection of trade marks under the Madrid System should be directed to officials for the governments of Tokelau, Niue and the Cook Islands.

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 or their licensees under certain conditions (right holders) 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 either parallel goods a person has imported for their own 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, including a letter of indemnity covering the costs that are incurred by Customs in enforcing the notice (eg storage and destruction costs), 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. Right holders may request their notices be enforced for a period of up to five years. However, a notice will become invalid if during that period the trade mark registration is allowed to expire 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 or change ownership of the trade mark registration).

Where goods are detained, Customs notifies right holders so that they can assess whether the goods are infringing and, if appropriate, take legal action 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 the right holder for a period of 3 working days. In such circumstances, Customs will advise the right holder 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 right holder’s notice is received by Customs within the 3-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.

• TRIPS Agreement  — World Trade Organization
• CPTPP Agreement  — New Zealand Foreign Affairs and Trade
• New Zealand Customs Service
• Lodge a notice of a New Zealand registered trade mark  — New Zealand Customs Service

Administrative agencies within New Zealand

• New Zealand Commerce Commission
• New Zealand Customs Service
• New Zealand Police

Footnotes

¹ As at 14 April 2021

² Section 208(3) of the Trade Marks Act 2002

³ See 1. above

⁴ Section 635 of the Cook Islands Act 1915

⁵ Section 702(1) of the Niue Act 1996 prior to August 2003 amendment.

⁶ Section 702(1) of the Niue Act 1996 amended in August 2003 to reflect the repeal of the Trade Marks Act 1953.

⁷ Section 86 of the Trade Marks Act 1953.

⁸ Rules 3(1)(v) and 3(2)(vi) of the Application of New Zealand Law Rules 2004 made under section 3A of the Tokelau Act 1948.