The Trade Marks Act 2002 gives the owner of a registered trade mark exclusive rights to the use of the trade mark in New Zealand. The owner may take action in the High Court against anyone who imports, sells, manufactures, or distributes goods bearing an unauthorised copy of the trade mark, or a mark similar to the trade mark, if it is likely to deceive or cause confusion.
This includes seconds, over-runs, reject goods, and so on bought from a factory which is contracted by the trade mark owner to manufacture goods, unless the sale is authorised by the owner of that trade mark. Factories are usually only permitted to manufacture the goods for the trade mark owner, not to sell them to others.
The owner of a trade mark or the owner's authorised agent, can give a notice to the Customs Service showing ownership of the trade mark and requesting the detention of goods which may bear unauthorised copies of the trade mark.
When lodging a notice with the Customs Service, the trade mark owner must also lodge a security of $5,000 and complete a security document that contains an indemnity clause to cover any costs that may be incurred by the Customs Service. The $5,000 security is lodged in the Service's trust account and is refundable at the end of the notice period, less any costs incurred.
Customs will detain any goods that may be subject to a notice, and will carry out an investigation into them. A determination (opinion) is made as to whether the goods appear to be unauthorised copies or not. The determination is issued to the trade mark owner, and includes details of the importer and the goods. A copy is also sent to the importer. The trade mark owner can then commence action in the High Court against the importer, including an order to obtain possession of the goods.
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The Copyright Act 1994 contains similar provisions to the Trade Marks Act.
The owner of a copyright or the owner’s authorised agent, can give a notice to the Customs Service, showing ownership of the work and requesting the detention of any pirated copies of the work.
When lodging a notice with the Customs Service, the copyright owner must also lodge a security of $5,000 and complete a security document that contains an indemnity clause to cover any cost that may be incurred by the Customs Service. The $5,000 security is lodged in the Service’s trust account and is refundable at the end of the notice period, less any costs incurred.
If a right holder is the owner of a copyright work and is also the registered owner of a trade mark and lodges notices under both Acts, then a dual-purpose security document may be lodged to cover both types of notices.
Where the Customs Service has accepted a notice from a copyright owner, the detention and investigation of imported goods is similar to the procedure outlined in the Trade Marks Act.
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