Access a full range of options to enforce your intellectual property rights and understand the most cost-effective and pragmatic ways to resolve your dispute.
Protect the value of your intellectual property
Intellectual property rights are valuable assets. Their infringement can significantly damage the uniqueness and value of a brand, product or entire business. Enforcement of intellectual property rights therefore forms a critical part of protecting an owner’s commercial position.
How intellectual property rights may be infringed
There are a number of ways this can happen. They range from deliberately copying someone’s intellectual property, such as manufacturing and selling counterfeit goods, to the inadvertent use of a business name that is too similar to a competitor’s. If you believe your intellectual property rights as an owner (or exclusive licensee) have been infringed, or you are worried your actions may infringe someone else’s rights, we can advise you on the legal position and what action you may take.
Options for protecting and enforcing your rights
A watching service enables clients to stay informed of market activity, industry developments and applications for rights, which may be potentially competitive or infringing. These signals can warn clients of the need to enforce their intellectual property rights. For example, a watching service may identify that a competitor has sought registration of a confusingly similar trade mark.
Preventing counterfeit goods from entering New Zealand and Australia is an effective way to enforce intellectual property rights. If you own a registered trade mark or can prove ownership of copyright, you can lodge a notice with the New Zealand Customs Service requesting detention of infringing goods that come under the control of Customs. For more information, please see our border protection page.
Warning letters (cease and desist letters)
For products or services considered to infringe existing rights in the New Zealand market, a highly effective first step is to issue a warning letter notifying the infringer of an owner's rights. Many infringers then stop their activity immediately. If the infringer does not stop or provides an unsatisfactory response to the warning the next course of action may be to issue court proceedings.
Legal proceedings including injunctions
The owner of an intellectual property right can apply to the court for an interim injunction. If awarded, it will temporarily stop the infringing conduct (such as use of a product) until the court determines the parties' respective rights. Many cases settle after an interim order is made. If the case goes on to a full hearing and the court decides there has been infringement, the court can make a permanent injunction order stopping the infringing behaviour. It can also award damages (or an account of profits).
If however the defendant believes that a claimed right such as a patent or a trade mark is invalid and should not have been granted in the first place, it can apply to have the owner’s right revoked.
There are a number of remedies available for infringement of intellectual property rights in addition to injunctions and damages (or an account of profits) that are worth consideration, depending on your objectives. Here are a few examples.
Under the Copyright Act 1994, you can seek additional damages as ‘punishment’ for a particularly serious infringement or obtain orders to deliver up infringing articles.
A fine may be imposed under the Fair Trading Act for misleading and deceptive conduct, or orders including to publish a corrective statement, to vary the terms of a contract, or to declare some or all of a contract as void.
If a domain name has been registered unfairly or in bad faith, you can seek orders to cancel, transfer, suspend, or otherwise amend the domain name.
The border protection provisions of the Copyright Act and Trade Marks Act also provide useful remedies for those with Customs notices in place. You can seek orders including that the infringing goods be forfeited to the Crown or destroyed.
In many cases, settlement of a dispute is the most sensible and cost-effective option. As a party to a dispute, you may receive a more positive outcome by agreeing to settlement terms, rather than facing the risks associated with seeing how the matter plays out in court.
We regularly advise on and draft settlement agreements, including agreements for co-existence of intellectual property rights, such as trade mark rights and licensing agreements.
Finding the right solution
Our dispute resolution specialists can help you to identify the enforcement options that best suit your circumstances. If you would like further information, please contact a member of our team.