Copyright and trade marks
If you are the owner of a copyright or trade mark, and have concerns that your brand, logo or work may have been unlawfully copied and applied to goods crossing our borders, you can arrange border protection for your intellectual property.
Intellectual property (IP) is a term used for human innovations and creativity that are capable of being protected under national law and international treaties. Under IP law, owners are granted certain exclusive rights to a variety of assets, such as musical, literary, and artistic works; discoveries and inventions; and words; phrases, symbols, and designs.
New Zealand is party to the international agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The agreement requires participating parties to adopt minimum standards for the protection and enforcement of IP rights.
New Zealand has border enforcement measures against counterfeit trade mark goods and pirated copyright goods. These are contained in the Trade Marks Act 2002 and the Copyright Act 1994. The two Acts allow for trade mark and copyright owners to file notices with Customs requesting the detention of imported goods that appear to infringe their intellectual property. The two Acts also provide us with the power to investigate to determine whether any detained goods appear to be goods to which a notice relates.
For more information on intellectual property, email IPRnotices@customs.govt.nz
Customs has a role in protecting New Zealand from unlawful imports or exports of pirated and counterfeit goods. We administer the border protection measures which are set out in the Trade Marks Act 2002 and the Copyright Act 1994 for intellectual property.
If you consider that your trade mark or copyright work is at risk of being unlawfully copied on goods imported to or exported from New Zealand, you can notify us of your intellectual property by lodging a border protection notice under the Trade Marks and/or Copyright Acts.
For a detailed list of trade mark and copyright notices accepted by us, see Intellectual property rights notices.
Customs also has the power to detain goods if a Customs officer has reasonable cause to suspect the goods are pirated or counterfeit even if a notice has not been filed.
Under the Copyright Act 1994, copyright protection comes into existence automatically when an original work is created and fixed – so you do not need to register copyright in New Zealand. Original works created in countries who are party to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, are also protected in New Zealand under this Agreement.
If you own the copyright in one or more literary, dramatic, musical, or artistic works; or one or more typographical arrangements of a published edition; or one or more sound recordings or films – you or your authorised agent may give notice in writing to us:
- claiming that an item or items are works in which you own the copyright; and
- requesting us to detain any pirated copies of the item or items which are under our control.
The format of a border protection notice, given under s136 (1) of the Copyright Act 1994, can be found in the Schedule of the Copyright (Border Protection) Regulations 1994.
A trade mark owner seeking protection of their trade mark in New Zealand must first register the trade mark with the Intellectual Property Office of New Zealand (IPONZ).
The Trade Marks Act 2002 sets out the protection that is available to trade mark owners in New Zealand.
If you are the registered owner of a trade mark you can file a notice in writing to us:
- claiming that you are the owner of a trade mark that it is registered in respect of the goods specified on the notice; and
- requesting we detain any goods under our control on which an infringing sign is used that are, or at any time come into, our control.
The format of a notice, given under s137 of the Trade Marks Act 2002, is set out in Schedule 2 of the Trade Mark Regulations 2003.
For each notice given under s137, you must also provide a copy of the Intellectual Property (IP) summary report which relates to the trade mark stated on the notice. IP summary reports are downloadable from the IPONZ website.
Notices may be in force for up to five years from the date the notice is filed. If the trade mark, or copyright in a work, expires within the period of five years then the notice will be in force for the lesser period. Notices may thereafter be continually renewed for further periods of up to five years at a time.
Indemnity and security
If you are filing notices with us for the first time, you will also be required to lodge a cash security amounting to $5,000 at that time. The cash security must also be accompanied by a completed security instrument. The security instrument is a document that contains an indemnity clause allowing us to draw upon the cash security, if required, for the purposes of recovering any administrative or legal costs it incurs when enforcing a notice on your behalf.
There are three forms of security instrument available to cater for the type of notices you will be filing with us. These are:
- Security under the Trade Marks Act 2002
- Security under the Copyright Act 1994
- Dual-purpose security for persons lodging notices under both the Trade Marks and Copyright Acts.
The cash security is placed in an interest-bearing trust account. The cash amount is on-call at all times and may be returned to you at any time should you wish to withdraw the notices that you have in place with us. In such an instance, the principle amount plus any interest which has accrued on the principle amount will be returned to you.
We review cash securities every five years, at which time we will forward you the interest which has accrued on the principle amount, and confirm with you if you would like the cash amount to be re-deposited or returned to you.
Authorisation to act
Intellectual property law can be complex and Customs' role forms just one part of a larger picture. It is recommended that you consult with a patent attorney or law firm specialising in intellectual property law before getting started. If you are using a law firm to act as your agent you will need to supply them with a letter authorising them to act on your behalf in respect of filing border protection notices with us.
Enforcement action by Customs
In cases where we intercept suspected counterfeit or pirated goods at the border we will investigate further and determine whether these goods infringe your intellectual property rights.
When a border protection notice has been filed
We will detain the goods and give you 10 working days to initiate Court proceedings against the importer or exporter. This period may be extended up to a total of 20 working days if there is good reason to do so.
In cases where an importer or exporter concedes that their goods infringe your intellectual property rights, the importer or exporter may consent to the goods being surrendered to the Crown.
If, as a trade mark or copyright owner, you choose not to take any Court action, then we are obliged by law to release the detained goods back to the importer or exporter.
Other goods suspected of infringing intellectual property rights
We can also detain goods that are not the subject of a border protection notice, if we have reasonable cause to suspect that they are pirated or counterfeit.
In these cases, we will notify the copyright or trademark owner, and they will have three working days to file a border protection notice. If a notice is filed the owner may then initiate court proceedings.
Protection against parallel imported goods
There is no law in New Zealand prohibiting parallel imports of genuine (not being counterfeit or pirated) goods. When you file a notice with us, it is a request that we detain any goods on which an infringing sign is used that are in the control of Customs. In other words, the request is to detain only counterfeit goods in our control, not genuine trade-marked goods.