IP Enforcement and Validity

Infringement

Intellectual property rights are enforced by you taking civil action in the High Court.  If you believe that you are infringing someone else’s intellectual property, or if you believe that your intellectual property is being infringed, please seek advice from one of our patent attorneys as soon as possible.  In a majority of cases, it is important to take action as soon as reasonably possible, since any delay can reduce your chances of a successful outcome and potentially increase the overall cost.

Generally, the majority of infringement disputes are resolved by correspondence rather than resorting to Court action.

Patent validity

The validity of a granted patent is generally challenged in the High Court.  However, several procedures are available through the Intellectual Property Office of New Zealand (IPONZ) to challenge pending patent applications and, in certain circumstances, granted patents.

The usual grounds of a challenge are that the claimed invention has been published or used before the priority date.  However, other grounds are also available, including that the patent applicant is not entitled to claim the invention.

If you are aware of a patent and you are concerned that you may be infringing it, our patent attorneys can provide an opinion of a) whether you may be infringing the patent, and/or b) whether the patent may be valid.

Registered Design validity

The validity of a registered design is challenged in the High Court. The most common ground of challenge is that the design which has been registered was not new in New Zealand at the date of filing the application for registration. If you are aware of a registered design and are concerned you may be infringing, our patent attorneys can advise you.

Trade mark validity

Several procedures are available through the Intellectual Property Office of New Zealand (IPONZ) to oppose pending trade mark applications or remove existing trade mark registrations in certain circumstances.  These circumstances include:

• That the trade mark may cause confusion to the public;
• That the trade mark was registered in bad faith;
• That the trade mark is, or has become, generic;
• That a registered trade mark has not been legitimately used in the last three years;
• That a registered trade mark should never have been registered.

These procedures are generally taken as part of another matter.  For example, if you find another party has registered a trade mark that you have been using unregistered for several years, you may wish to file an application to register your trade mark and apply to have the other registration invalidated.

Copyright enforcement

Copyright is not registered in New Zealand; it exists automatically, and can be infringed only by copying.

It follows that if you are accused of copyright infringement, but you (and/or your designers) have never seen the article or material you are being accused of infringing, then (except in very unusual circumstances), it is extremely unlikely that you are infringing.

Copyright infringement is a complex area of law, so if you believe that your copyright is being infringed, or if you are accused of infringement, it is important to contact a patent attorney as soon as possible.

Border protection measures

New Zealand law can protect against the import of counterfeit goods. This involves filing a Notice with Customs.

A copyright owner or a registered proprietor of a trade mark can give notice to the Customs Department requesting Customs to detain any infringing goods being imported into New Zealand. The notice is valid for up to 5 years, and can be renewed at the end of each 5 year period. Note: this procedure is not available for patents or registered designs.

Please contact one of our Patent Attorneys for more information on these procedures.