Reading for this lecture
Readings for this lecture: chapter 9 on intellectual
property (9.5);
Intellectual Property
Umbrella term for human innovations & creativity –
protection
Trademark
Designs
Patents
Copyright
Trade Secrets
Intellectual Property
IMPORTANCE OF IP PROTECTION
preventing competitors from copying or closely imitating a
business’s products, technical processes, or business services,
avoiding wasteful investment in research and development
(R&D) and marketing,
creating a corporate identity through a branding strategy,
negotiating licensing, franchising, and other IP-based
contractual agreements,
increasing the market value of the business,
acquiring venture capital and enhancing access to finance,
obtaining access to new markets.
Patents Act 2013
Invention
Obtained through a registration process
Requirements – Patentable Invention – Section 14
Novel – New – section 6 – different from anything
previously known to the public anywhere in the world
Inventive – section 7 – feature or step which is not
obvious to someone with a sound grasp of the technology
Useful – section 10 – should have a practical application,
and should work
Patents Act
Excluded – sections 11, 15, 16
scientific theories or mathematical formulae
art works and literature
business schemes or ways of presenting information
computer programs
methods of human medical treatment
diagnostic methods practised on humans
processes for cloning humans
using human embryos for industrial or commercial purposes
plant varieties.
Patents Act
Effect of Registration – Section 18
Exclusive Right to Exploit
Duration – Section 20
20 years from patent date/filing complete docs
Overseas Registration
The Paris Convention
The Patent Cooperation Treaty
Regional applications
Patents Act
Infringement – an unauthorised use of the invention
for which the patent holder has the following remedies:
Damages (common law)
Account of profits (equity)
Injunction
Delivery Up or Disposal
Certificate of contested validity.
Trade Secrets
No registration mechanism to protect the secret
Protected by Confidentiality Agreement
No limit on exclusive right to exploit the secret
Can be copied by third party
Requirements for protection under Confidentiality Principle:
Information must be confidential in character
Other party knows the information is confidential – eg marked
“Confidential”, not in public domain
If the information is disclosed, would be detrimental to the other party
Examples of Trade Secrets – Coca Cola formula, strategic plans,
ideas for a new product
Copyright – no registration
mechanism
Original work
Automatic and immediate
Free and does not require registration
Meaning – section 14 – Copyright Act 1994
literary works including text like emails, training manuals, novels and song lyrics;
tables and compilations including multimedia works, and computer programs
dramatic works including dance, mime and film scenarios or scripts
musical works including the score and sheet music
artistic works including paintings, drawings, diagrams, maps, models, photographs and
sculptures
sound recordings separate to the actual music or story
films for any genre or format, separate from the underlying script, music or broadcast
communication works including radio and television broadcasts and internet webcasts
typographical arrangements of published editions covering the layout of the edition
derived from a complete or partial literary, dramatic or musical work.
Copyright
Qualification for Copyright – section 18
New Zealand citizen or subject of a prescribed foreign
country; or
an individual domiciled or resident in New Zealand or
resident in a prescribed foreign country; or
a body incorporated under the law of New Zealand or
prescribed foreign country
Ownership – Author – unless
During course of employment – employer
Commissioned
Copyright
Owner’s Rights
copy – reproduce, scan, record, download and store
issue copies to the public – publish or distribute
perform, play or show the work in public
communicate their work to the public including radio and
television broadcasts and internet webcasts
adapt including translating the work from one language to
another
Copyright
How to Protect Copyright
Record Keeping – it’s important to keep track of your own
copyright work. Copyright work records can include hard
copies of electronic documents, print editions, prototypes,
moulds, drawings and log books supporting when a
copyright work was first created, and contracts and
agreements clarifying copyright ownership.
Copyright Indicator – the © symbol followed by the name
of the copyright owner and year the copyright work was
first created. For example: © Manu Aroha 2008
Unlike patent process in New Zealand, no application or
registration process
Duration of Protection
Copyright work
New Zealand time limit
Literary, dramatic, musical and artistic* works 50 years beyond the death of the author
Publisher’s copyright (typographical layout of a published
edition)
25 years from publication
Sound recordings and film 50 years from the year in which the work was made
Communication works including repeats 50 years from the initial broadcast or transmission.
*Commercialised product designs (Artistic work that has
been applied industrially)
- product designs and casting moulds
- works of craftsmanship
16 years
25 years
Copyright
Infringement – is the making of copies without the
owner’s permission. There are many exceptions to
infringement, the most common probably being fair
dealing and copying for the purpose of research or
private study.
An infringer must have:
copied an entire work or substantial part of it
produced a work sufficiently similar to a copyrighted work
that an average viewer would think that it was a copy
in some way used the copyrighted work to produce their own.
Copyright
Civil remedies:
Injunction
Damages (common law)
Account of profits (equity)
Delivery up and destruction
Copyright
Criminal Infringement –
dealing with infringing objects – section 131
$10,000.00 – $150,000.00 or up to 5 years imprisonment.
(see Sections131 & 133 – company director liability)
Illicit Recording – section 198
$5,000.00 – $50,000.00 or up to three months imprisonment.
Section 201 – company director liability – if it is proved that
the director or person in management authorised, permitted or
consented to the offence and knew, or could reasonably be
expected to have known, that the offence was to be or was
being committed and failed to take all reasonable steps to
prevent or stop it, the director or person in management will
be liable to a fine of $5,000 – $50,000 or up to 3 months
imprisonment.
Copyright
Compare Copyright/Trademarks/Patents – note USA law
https://copyrightalliance.org/ca_faq_post/difference-c
opyright-patent-trademark/
Designs
Designs Act 1953
Meaning of Designs – section 2
Registrable Designs – section 5(2) – a design shall not be
registered thereunder unless it is new or original and in
particular shall not be so registered in respect of any
article if it is the same as a design which before the date
of the application for registration has been registered or
published in New Zealand in respect of the same or any
other article or differs from such a design only in
immaterial details or in features which are variants
commonly used in the trade.
Designs
Effect of Registration – Section 11(1) – give to the
registered proprietor the copyright in the design,
exclusive right in New Zealand to make or import for
sale or for use for the purposes of any trade or
business, or to sell, hire, or offer for sale or hire
Period of Copyright in the Design – Section 12 – 3
periods of 5 years, application for renewal before expiry
of each period – section 12.
Designs
Difference between design and patent protection
Design registration protects only the external appearance
of a manufactured article, especially those novel or
original design features that can appeal to the eye of a
customer.
A patent protects the concept or idea behind an industrial
product, such as its novel or original construction and
functions.
Designs
Features make a design registrable
not be published in New Zealand before the filing date. This means that
you should keep the design confidential and not publish the design at least
until after you have filed the application to register. In particular do not
show your design on a website or in publicity pamphlets until after you
have made your application.
consist of new or original “features of shape, configuration, pattern or
ornament” that are applied to an article by any industrial process or
means.
have features that appeal to and are judged solely by the eye.
not be purely functional or relate to a method or principle of construction.
For example, a registered design would not be granted for designing a fork, as
this would prevent everyone else from making forks. However, the shape of a
fork, or a particular pattern applied to a fork, may be registered as a design.
Designs
Some designs are not registrable:
A design which is a method or principle of construction is
not registrable.
Designs applied to works of sculpture except if they to be
used as casts or models for mass production cannot be
registered.
Designs applied to wall plaques and medals cannot be
registered.
Designs applied to printed matter primarily of a literary or
artistic character cannot be registered. Examples are
bookjackets, calendars, certificates, maps, plans, leaflets.
Designs
protected by copyright
It is possible that your design is protected, provided it
meets the copyright protection requirements of being a
new and original work, with some artistic quality or level of
skill.
If so, copyright protection is automatic and immediate.
Copyright protection is free and does not require
registration.
However, without registration you may never know if
copyright gives you adequate protection until it is
challenged by another person or business. You may not be
able to prove that your design is new or original, or created
before a competitor’s design, so the assumed protection is
not there.
Designs
Benefits of registering
A stronger legal barrier
Market competitiveness – exclusive trade right to that
design in New Zealand for a period of up to 15 years
Added business value
Priority rights
Trademarks
Trade marks can be registered under the Trade Marks
Act 2002 to gain monopoly protection but do not need
to be as there may still be protection under the
common law (tort of passing off) or the Fair Trading
Act 1986 – misleading and deceptive conduct.
Definition – Section 5 of Trade Marks Act – trademark /
sign; capable of being represented graphically and
distinguishing the goods and services of a person from
another person.
Trade marks can include words, logos, colours, shapes,
sounds, smells – or any combination of these.
Trademarks
trade mark—
(a) means any sign capable of—
(i) being represented graphically; and
(ii) (ii) distinguishing the goods or services of one person
from those of another person
Definition of Signs – sign includes—
(a) a brand, colour, device, heading, label, letter, name,
numeral, shape, signature, smell, sound, taste, ticket,
or word; and
(b) (b) any combination of signs.
Trademarks
Purpose
distinguish their products or services from similar products
or services offered by competitors
create a distinctive and preferably memorable brand that
customers associate with quality products or service
Value
become a valuable business asset – eg Mainland Butter /
Budget butter
Registration – Commissioner of Trademarks – upon
registration, the ® symbol may be used with the trade
mark
Trademarks
Not Registrable
Section 17
Likely to deceive or cause confusion
Contrary to NZ laws
Offend significant section of community, inc Maori
Made in bad faith
Section 18
Sign that is not a trademark
No distinctive character
consists only of signs or indications that may serve, in trade, to designate the
kind, quality, quantity, intended purpose, value, geographical origin, time of
production of goods or of rendering of services, or other characteristics of
goods or services eg BUDGET SUPERMARKET.// APPLE
consists only of signs or indications that have become customary in the current language or in the
bona fide and established practices of trade eg EXTRA SUPREME pizza
Trademarks – Re Trademark
application no. 735055
Re Victoria’s Secret Stores Brand Management Inc (2008)
VSSBMI applied for registration as a trademark “Strawberries & Champagne”
covering a range of personal care products. IPONZ rejected the application on
the grounds (1) that it only served, in trade, to designate the kind, quality,
quantity, intended purpose, value, geographical origin, time of production of
goods or of rendering of services, or other characteristics of goods or services
(s18(1)(c); (2) that it consisted only of signs that have become customary in
the current language or in the bona fide and established practices of trade
(s18(1)(d); (3) that it possessed no distinctive character (s18(1)(d). Held :
Dismissing IPONZ objections, as to (1) the phrase trademark “Strawberries &
Champagne” would not convey to the ordinary person the nature of the
goods, personal care products, but “was a skilful allusion to a general mood
of luxury and relaxation”. This was not descriptive of the goods themselves,
and so was not barred by s18(1)(c). (2) There was no evidence that the words
trademark “Strawberries & Champagne” were customarily used within the
trade in personal care products; and (3) trademark “Strawberries &
Champagne” was not descriptive of the goods such that other manufacturers
might innocently apply it to their products without any intention of usurping
the applicants’ registered trademark, thus s18(1)(d) was not applicable.
Trademarks
The slogan coined to promote the Lemon & Paeroa drink,
“World famous in New Zealand” was not regarded by the High
Court as an ordinary phrase indicating a characteristic, but as
one that been invented, since it was a quirky and distinctive
oxymoron, not a generic phrase but associated in the public
mind with Lemon & Paeroa (L&P). It could be registered as a
trade mark.
Trademarks
Duration – 10 years – section 57
Revocation of Registration – If the trade mark has not
been put to genuine use in the course of trade in New
Zealand for a continuous period of 3 years from the
date of registration – section 66(1)
Infringement
Section 89 – identical or similar sign used in course of trade
Section 92 – no infringement if registration does not extend
to the circumstances
Trademarks
Civil remedies
Injunction – section 106
damages – section 106
an account of profits – section 106
Delivery up – section 109
Disposal – section 110
Fair Trading Act – section 9
Passing Off
Trademarks
Criminal Liabilities – Penalties – section 125
Counterfeit/falsely apply registered trademarks to goods&
services/making copies/ possess object for making copies
$10,000 for each goods or services – not exceeding $150,000; or
Imprisonment not exceeding 5 years
Import to sell
$150,000; or
Imprisonment nor exceeding 5 years
Section 119 – company directors and officers will be
individually liable if they authorised the action, or knew
about it or should have known about it and took no action
to stop it.
Trademarks
Failure to Register – Alternative Remedy – section 9 of
the Fair Trading Act – Misleading/ Deceptive Conduct or
action for Passing Off – see pages 415 and 416 –
Understanding Commercial Law
The tort of passing off
Occurs when one business tries to take advantage of
another’s reputation
Generally occurs through use of same or similar name or
brand
Tort of passing off provides common law protection
Elements required to prove tort of passing off:
Goodwill
Action by defendant that will cause potential customers to
think business is plaintiff’s business
Actual loss or likelihood of loss because of damage to
goodwill
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