ISSN 1175-396X
12
CUSTOMS FACT SHEET
» IMPORTANT INFORMATION
INTELLECTUAL PROPERTY RIGHTS
TRADE MARKS AND COPYRIGHT
This fact sheet describes how trade mark and copyright owners can file border protection
notices with Customs to help protect them against the importation of unauthorised copies
of their intellectual property.
WHAT IS INTELLECTUAL PROPERTY?
The Intellectual Property Office of
New Zealand (IPONZ) describes
intellectual property (IP) as an umbrella
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.
IS NEW ZEALAND PARTY TO ANY
INTERNATIONAL AGREEMENTS
RELATING TO THE ENFORCEMENT
OF IP RIGHTS?
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 enacted border enforcement
measures against counterfeit trade mark
goods and pirated copyright goods.
These are contained within 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 Customs with the power
to investigate such importations and
determine whether any detained goods
appear to be goods to which a notice
relates.
HOW DOES A PERSON FILE NOTICES
WITH CUSTOMS AND ARE THERE
ANY OTHER REQUIREMENTS
ASSOCIATED WITH THIS?
Notices filed with Customs under the
Trade Marks and Copyright Acts must
be in writing. The formats of these
notices are set out in the schedules
of the Trade Marks Regulations 2003
and the Copyright (Border Protection)
Regulations 1994. Template guides for
completing a notice may be found on
the Customs website
www.customs.govt.nz by searching on
‘trade marks guide’ or ‘copyright guide’.
When you file a notice with Customs
under the Trade Marks Act 2002 it must
be in respect of goods for which a trade
mark is registered in New Zealand. The
notice you file must be accompanied
by a copy of the Case Details Report
(CDR) relative to the trade mark number
stated on the notice. Trade mark CDRs
may be downloaded from the IPONZ
website www.iponz.govt.nz/cms/
trade-marks/ using the ‘search for trade
marks’ facility. Customs is unable to
accept trade mark notices for classes 3545. These classes are service related, not
goods related, and are intangible assets.
When you file a notice with Customs
under the Copyright Act 1994 for a
copyright work you must supply with
the notice the relevant means (images,
drawings, description etc) with which
Customs can readily identify your work
at the border. Your copyright work
must be in a tangible form otherwise
Customs will have little or no chance of
identifying it during border checks.
Before Customs will accept a notice filed
under the Trade Marks or Copyright
Acts, you will be required to lodge a cash
security of NZ$5,000 and complete a
security instrument (downloaded from
the Customs website www.customs.govt.
nz by searching on ‘security instrument’).
The security instrument indemnifies
Customs against administrative and legal
costs it may incur when enforcing a
notice and provides the mechanism for
allowing Customs to draw funds from
the cash security. Cash securities held in
trust by Customs remain on-call at all
times and accrue interest at prevailing
bank interest rates. When you choose
to withdraw your notice(s), the cash
security and any accrued interest will be
returned to you.
Issue date November 2013
CUSTOMS FACT SHEET 12
If you are using an agent to file
your notices with Customs, or you
represent an overseas based entity in
New Zealand, you will be required to
file an ‘authorisation of agent’ letter
with Customs from the trade mark
or copyright owner. The letter must
state what functions and delegations
the trade mark or copyright owner has
empowered, or delegated to his/her
New Zealand agent to carry out on his/
her behalf.
WHAT HAPPENS ONCE A NOTICE
HAS BEEN FILED WITH CUSTOMS?
Notices accepted by Customs are
published on the Customs website.
These are listed under the names of the
trade mark or copyright owners who
have filed notices and allow prospective
importers of branded goods the
opportunity to view the range of IP
assets that Customs is enforcing at
the border.
Customs is able to use its resources to
target and identify commercial imports
of potentially infringing goods for
which it has received a notice. When
Customs discovers potentially infringing
goods at the border it will conduct an
investigation to determine whether or
not it considers that the goods appear
to infringe the notice. If Customs
considers this to be the case, it will
detain the goods and serve a notice
of determination on the importer (or
claimant) of the goods and the rights
holder who filed the notice
with Customs.
Importers who have had a notice of
determination served on them have
the option of voluntarily forfeiting
the goods to the Crown in which case,
Customs will arrange for the destruction
of the goods. If an importer disputes
a notice of determination, the rights
holder will have 10 working days
from the issue date of the notice of
determination to either persuade the
importer to forfeit the goods, or obtain
an order from the High Court declaring
the goods to be infringing goods. The
10 working day period may, on
application, be extended to 20 working
days if Customs considers it appropriate
to do so in all the circumstances. If the
rights holder chooses to take no action
against an importer who disputes a
notice of determination, Customs will
release the detained goods to
the importer.
Customs recommends that a rights
holder filing notices with Customs
should consult with a lawyer specialising
in intellectual property law before
filing a notice. A rights holder should
have a prepared action plan of the
options available to them in the event
of Customs detaining infringing goods.
The rights holder should also have
an appreciation of what action he/
she must take, within a 10 working day
timeframe, if Court action is the only
option available to prevent an importer
exploiting his/her intellectual
property rights.
HOW LONG IS A NOTICE VALID
FOR?
Notices filed with Customs may be in
force for a period 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.
DOES THE FILING OF A NOTICE
PROTECT ME 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 Customs
under the Trade Marks Act 2002, the
notice is a request to Customs to detain
any goods on, or in physical relation to,
which an infringing sign is used that are
in, or at any time come into, the control
of Customs. In other words, the request
to Customs from the trade mark owner
is to detain any counterfeit goods only
that come into the control of Customs,
not genuine trade-marked goods.
A similar situation applies with works
protected by copyright. A notice will
request Customs to detain any pirated
works only (unlicensed copies of an
original) that come into the control
of Customs, not genuine or licenceproduced examples of the same.
FOR FURTHER INFORMATION
Visit the Customs website
www.customs.govt.nz, or email
IPRnotices@customs.govt.nz for
assistance, or call Customs on
0800 428 786 (0800 4 CUSTOMS)
or contact your nearest office of the
New Zealand Customs Service.
Office of the Comptroller of Customs, PO Box 2218, Wellington
Phone: +64 4 901 4500 » Fax: +64 4 901 4555 » www.customs.govt.nz
ISSN 1175-396X
Intellectual Property Rights Trade Marks and Copyright
Issue date November 2013
2