Proposed amendment to New Zealand trade mark law targets counterfeit and pirated goods

The New Zealand government has announced proposed trade mark law amendments to stem the growth of illegal counterfeit goods coming into the country by increasing border powers for Customs.

In a joint announcement late last year, the Minister of Customs and the Associate Minister of Commerce said the Government will amend the Trade Mark and Copyright Acts to enable Customs to take discretionary prosecutions against importers of counterfeit and pirated goods. The amendments will also give Customs investigative powers specific to the counterfeit and pirated goods detained at the border.

The international trade of pirated and counterfeit goods has significantly increased in recent years. Customs’ annual number of border interceptions since 2001 has increased by more than 300 per cent.

Currently, New Zealand Customs identify and detain imported goods that may infringe trade mark or copyright rights where the owners of those rights have lodged a notice requesting Customs do so. Scepticism has been expressed as to whether the additional power allowing Customs to prosecute importers will be practical for Customs staff to implement.

The increased powers for Customs will be given effect by the Trade Marks (International Treaties and Enforcement) Amendment Bill (“the Bill”). The Bill is expected to be introduced into Parliament in 2008.

Damian Broadley

Summer ale - a description for beer or a distinctive trade mark?

New Zealand ’s two largest beer makers battled it out in the High Court recently over the right to use the words SUMMER ALE.

DB Breweries (DB) has been selling MONTEITH’S SUMMER ALE seasonally in New Zealand since 1998. In October 2007, Lion Nathan (Lion) launched its new product MAC’S SUN DANCE SUMMER ALE.

DB believed it should be entitled to use the SUMMER ALE name exclusively in New Zealand, so it applied to the High Court for an order stopping Lion from marketing and distributing MAC’S SUN DANCE SUMMER ALE.

The Court found the underlying problem DB faced was that the phrase SUMMER ALE did not originate from either DB or Lion. Lion’s evidence showed that SUMMER ALE was a name that described a specific type of refreshing, light coloured beer brewed for summer and could be used by any beer maker to promote the sale of their product. The Court dismissed DB’s claim.

DB’s predicament highlights the difficulty in trying to claim exclusive rights in words that describe the product or service on which they are used. The purpose of a trade mark is to differentiate the goods or services of one trader from those of another.

When selecting a trade mark, it is important to choose a word that does not describe the product. In most cases descriptive words are unlikely to ever be distinctive of your product alone. In the case of beers, names like “pilsner”, “summer ale”, and “lager” all describe types of beer. No one trader can claim they should be the only one allowed to use those words to sell their beer. They are, and should remain, free for all traders to use. This is one of the basic principles of trade mark law.

So what trade mark should you adopt? When it comes to selecting a trade mark to represent your business, or the products and services you sell, you should always look for a name that is distinctive, not descriptive.

Good examples of highly distinctive trade marks are ZESPRI, ANCHOR, and TIP TOP. ZESPRI is a made up word, and the descriptive elements of ANCHOR and TIP TOP don't describe the goods on which they are used, namely butter and ice cream.

Matthew Hayes

Supreme Court has final say on trade mark dispute

A recent trade mark dispute has run the full gamut of the New Zealand court system. The owner of the WILD TURKEY trade mark objected to registration of WILD GEESE for alcohol.

The Commissioner of Trade Marks decided the marks were not confusingly similar. On appeal the High Court disagreed. The Court of Appeal then reinstated the Commissioner’s conclusion.

The Supreme Court then agreed to look at the case. This is only done when there are important questions to answer.

In this case the question was what weight or deference should be paid by the appeal judge to the Commissioner’s original decision about whether or not the mark is registrable. The suggestion was that an appeal judge should defer to the Commissioner’s decision. This is because of the Commissioner’s experience in deciding trade mark matters. The similarity of WILD TURKEY and WILD GEESE effectively became a side issue.

The Supreme Court decided that in most cases the appeal judge does not need to defer to the Commissioner’s decision. An appeal judge must reach their own conclusion. This is a helpful legal clarification for us when advising client’s on appealing decisions of the Commissioner.

As for the WILD TURKEY and WILD GEESE marks, the result was that they were found not to be confusingly similar.

Nigel Robb

Watch out for domain name scam

Over recent months we have received several enquiries from clients and the public about letters received from a Chinese information technology company.

The company appears to be a legitimate business handling domain name registrations in China.

The letters are often written in poor English and are designed to entice an enquiry from the recipient. The company claims it is handling a possible infringement of the intellectual property rights of the recipient.

Be aware that this is a scam.

If you receive a letter about a Chinese domain name application that might infringe your intellectual property rights and are in doubt about its authenticity, please call us or send us a copy of the letter. We can advise you if the service offered is genuine.  

Russell Law

The Maori Edge – the way to go?

Te Puni Kokiri has issued its latest report: Te wa o tea o hurihuri ki te Ohanga Whanaketanaga Maori – A time for Change in Maori Economic Development.

The report encourages all New Zealand organisations to adopt the “Maori Edge” as part of their culture. This strategy will help New Zealand organisations achieve the “edge” over their competitors and increase our Maori presence overseas.

Several New Zealand organisations have successfully adopted the “Maori Edge” strategy as part of their branding. And it may be a strategy worth considering for your organisation. Any point of difference that makes you stand out from your competitors will give you an advantage. But before you launch your new “Maori Edge” strategy, you should check:

• the meaning of your new image with Maori
• whether other parties have adopted the same or similar mark.

Indigenous people’s words and images have been misused and misappropriated for many years. Maori words and images are no exception. You cannot assume that because your words or labels are uniquely Maori that these words have not been misused or misappropriated by others.

The long awaited decision on the Wai 262 claim may also impact on the availability of Maori words and images for use in commerce and trade. The hearings for the claim ended in July 2007, but a decision is not expected any time soon.

If you decide to adopt a new label or image to take advantage of the strategies proposed in the TPK report, then please contact us for advice on a search and protection strategy.

Lynell Tuffery