RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q2/NZL/1
19 January 1998
(98-0167)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON TRADEMARKS, GEOGRAPHICAL
INDICATIONS AND INDUSTRIAL DESIGNS
New Zealand
The present document reproduces the introductory statement made by the delegation of
New Zealand, the questions put to it and the responses given in the review of legislation on
trademarks, geographical indications and industrial designs in the context of the Council's meeting of
11-15 November 1996.1
_______________
I. INTRODUCTORY STATEMENT2
Trademarks
The basis of New Zealand's trademark law is the Trade Marks Act 1953 which came into
force in 1954.  The Act has 15 parts including the definitions part.
There are also the associated regulations as follows:
- Trade Marks Regulations 1954;
- Trade Marks (Border Protection and Transitional Applications) Regulations 1994.
The Act was amended in 1987, 1994 and 1996.  The 1994 amendments were made in order to
comply with the TRIPS Agreement.  In particular, the Trade Marks Amendment Act 1994:
- amended the definition of "Trade Mark";
- introduced a definition of sign;
                                                     
1 The minutes of this meeting are contained in document IP/C/M/11. 
2 As regards laws and regulations relevant to the areas under review as notified by New Zealand  under
Article 63.2 of the Agreement, reference is made to documents IP/N/1/NZL/1, IP/N/1/NZL/T/1-3,
IP/N/1/NZL/G/1-2, IP/N/1/NZL/D/1-2, IP/N/1/NZL/C/1-3 and IP/N/NZL/I/1.  Amendments notified by New Zealand subsequent to the review can be found in documents IP/N/1/NZL//2 and IP/N/1/NZL/T/1/Add.1,IP/N/1/NZL/G/1/Add.1, IP/N/1/NZL/D/1/Add.1, IP/N/NZL/C/1/Add.1, IP/N/1/NZL/C/2/Add.1,IP/N/NZL/C/3/Add.1 and IP/N/1/NZL/I/1/Add.1.IP/Q2/NZL/1
Page 2
- provided that the rights given to a trademark proprietor against infringement of a
trademark be extended to use of a sign that is identical or "similar to" the registered
trademark;
- amended the Act to provide that the nature of goods and services to which a
trademark is to be applied shall not form an obstacle to registration;
- provided that protection be given to "well-known marks";  and- created border protection measures which comply with Articles 51-60 of the TRIPS
Agreement.
The 1996 Amendment Act made some follow-up amendments to the Trade Marks
Amendment Act 1994.  In particular, the Trade Marks Act was amended to:
- ensure that the Act complied with New Zealand's obligations under the TRIPS
Agreement in respect to geographical indications in that the Trade Marks Act no
longer provides that it shall be lawful to register a trademark even if use of thetrademark is prohibited under the Geographical Indications Act;
- re-insert two sub-sections in respect to powers of, and restrictions on, assignment and
transmission which were inadvertently deleted in the 1994 Amendment Act;
- clarify the position relating to the use of trademarks by a person other than the
proprietor where the proprietor has authorized the use.
A copy of the 1996 Amendment Act will be notified to the Secretariat shortly and will be
available to all Members as soon as it has been processed.
In addition to the recent amendments to the Act, New Zealand is undertaking a
comprehensive review of the industrial property rights statutes, which includes the Trade Marks Act.
The aim of this review is to ensure that New Zealand's industrial property laws:
- take account of developments in business and technology, both domestically and
internationally;  and
- promote innovation and encourage the transfer of technology to New Zealand.
Geographical Indications
Protection for geographical indications is prov ided through the Fair Trading Act, the Trade
Marks Act and the common law tort of passing off.
In order to provide for a registration system for geographical indications, the Geographical
Indications Act was passed.  The main objective of the Act is to provide for the registration of both
local and foreign geographical indications.  The Act provides for the registration and protection of
geographical indications in relation to goods, in accordance with Articles 22, 23 and 24 of the TRIPSAgreement.  The Act also provides for the registration of foreign geographical indications where
New Zealand has entered into any multilateral or bilateral agreements.IP/Q2/NZL/1
Page 3
The main provisions of the Act are:
- The establishment of a Register of Protected Geographical Indications for New
Zealand and international geographical indications.  Only geographical indications
which are submitted by the New Zealand Surveyor-General (after determination by
the geographical indications committee) or from competent international authorities
seeking to protect their geographical indications will be included on the Register.This Register will be maintained by the New Zealand Patent Office.
- The inclusion of procedures for determining geographical indications in New
Zealand.  New Zealand applications for determining geographical indications will be
considered by a geographical indications committee consisting of New Zealand
Geographic Board members and representatives of the relevant industry.  The public
will be able to make submissions to the geographical indications committee on an
application and there are provisions allowing for the appeal of a determination madeby the geographical indications committee.
- Where protected geographical indications are used in a misleading or deceptive
manner, the use will be deemed to be an offence under the Fair Trading Act 1986 and
the provisions of that Act will then apply.
Designs
The basis of New Zealand's design law is the Designs Act 1953 which came into force on
1 January 1955 and the Designs Regulations 1954.
The Designs Act did not need to be amended in order to be brought into conformity with the
TRIPS Agreement, because the provisions in th e Act already complied with the TRIPS Agreement.
The Designs Act provides a means for ensuring that designers can protect their works.  To be
eligible for protection under the Act, there must be a formal application for protection and a
depositing of drawings.  The design must be new or original;  have eye appeal;  must not be wholly
functional;  and must be applied to an article.  The maximum period for protection is 15 years from
the date of application.
It should be noted that, in New Zealand, most works of designers are protected under the
Copyright Act 1994 rather than the Designs Act because the Copyright Act provides for a more
extensive period of protection, is free and automatic for all original designs and no formalities need to
be satisfied.
New Zealand is currently undertaking a comprehensive review of the industrial property
rights statutes, which includes the Designs Act.  The aim of this review is to ensure that NewZealand's industrial property laws:
- take account of developments in business and technology both domestically and
internationally;
- promote innovation, and encourage the transfer of technology to New Zealand.IP/Q2/NZL/1
Page 4
II. REPLY TO THE GENERAL QUESTION CONCERNING PRIORITY RIGHTS3
Does your country recognize a right of priority on the basis of an earlier trademark
application filed in any other WTO Member by a national of a WTO Member?
New Zealand currently recognizes a right of priority on the basis of an earlier trademark
application for those countries that are members of  the Paris Convention or where New Zealand has a
bilateral agreement concerning the priority of trademark applications.
An amendment to the Patents, Designs and Trade Marks Convention Order is currently being
prepared.  The purpose of the amendment is to extend the Convention Order to WTO Members who
are not members of the Paris Convention.
III. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
1. Does New Zealand law provide for the registration and protection of collective marks in
accordance with Article 7bis of the Paris Convention in conjunction with Article 2.1 of the TRIPSAgreement?  Please explain.
New Zealand does not specifically provide for the registration of collective trademarks.
When New Zealand undertook changes to comply with its TRIPS obligations, it was considered that
collective trademarks could be included within the regular trademark system, which included
certification trademarks, pending specific provision being made for collective trademarks in omnibuslegislation enacting reforms to the New Zealand Trade Marks Act 1953.  Due to delays in enacting
this omnibus legislation, New Zealand may have to specifically provide for collective trademarks by
way of a separate legislative amendment.
[Follow-up question from the EC]
In its answer to question 1, New Zealand refers to delays in enacting new legislation in the
context of the protection of collective marks.  Coul d New Zealand be more concrete with regard to the
timing of such new legislation?
New Zealand does not currently provide protection for collective trademarks.  The Ministry
of Commerce, the government department responsible for intellectual property policy, is now
considering how this issue could be addressed in 1997.
2. Does New Zealand trademark law provide for temporary protection of trademarks in respect
of goods exhibited at official or officially recognized international exhibitions held in the territory of
any Member State of the Paris Convention, in accordance with Article 11 of the Paris Convention in
conjunction with Article 2.1 of the TRIPS Agreement?
New Zealand meets the requirements of Article 11 of the Paris Convention without the need
to provide for temporary protection.  New Zealand provides protection for well-known trademarks in
                                                     
3 At the meeting of the TRIPS Council of 11-15 November 1996, Members agreed to respond to this
question in the context of the present review (document IP/C/M/11, paragraph 43).IP/Q2/NZL/1
Page 5
Section 17 and provides for situations where there has been prior use of a mark in Section 11.  In
particular, Section 11(1) provides:
"(1) Nothing in this Act shall entitle the proprietor or a registered user of a
registered trade mark to interfere with or restrain the use by any person of a trade
mark identical with or similar to it in relati on to goods or services in relation to which
that person or a predecessor in title of his or her had continuously used that trademark from a date prior to --
(a) The use of the first-mentioned trade mark in relation to those goods or
services or similar goods or services by the proprietor or a predecessor in title
of his or her;  or
(b) The registration of the first-mentioned trade mark in respect of those goods or
services or similar goods or services in the name of the proprietor or a
predecessor in title of his or her, --
whichever is the earlier, or to object (on such use being proved) to that person being
put on the register for that identical or similar trade mark in respect of those goods or
services or similar goods or services under Section 17(5) of this Act."
The Fair Trading Act 1986 and the common law tort of passing off also provide a means to
pursue those who appropriate marks when displayed at official or officially recognized international
exhibitions.  In particular, the Fair Trading Act 1986 prohibits persons from, in trade, forging any
trademark or falsely applying that mark to goods or services in a way that is likely to mislead or
deceive (Section 16(1) as amended by Section 33 of the Trade Marks Amendment Act 1987).
[Follow-up question from the EC]
In its answer, New Zealand refers specifically to the protection of well-known trademarks
under Section 17 without giving any further inform ation.  Could New Zealand explain Section 17 and
how it meets the requirements of Article 11 of the Paris Convention?
Article 11 of the Paris Convention requires countries of the Union to, inter alia , grant
temporary protection to trademarks in respect of goods exhibited at official or officially recognized
international exhibitions.  Section 17 of the Trade Marks Act implements Article 11 of the PairsConvention to the extent that any trademark in resp ect of goods exhibited at official or officially
recognized international exhibitions is a well-known mark.  As previously mentioned in New
Zealand's initial response, Section 11 of the Trade Marks Act is the primary provision implementing
New Zealand's obligations under Article 11 of the Paris Convention.
3. Is New Zealand law to be interpreted as granting trademark owners the possibility to oppose
the cancellation of a trademark for reasons of non-use on the basis that use was prevented due to
government requirements other than import restri ctions (Article 19.1 of the TRIPS Agreement)?
Yes, this interpretation is correct.  Section 16(2) of the Trade Marks Act 1953 (as provided in
Section 8 of the Trade Marks Amendment Act 1994) ensures that legislation which might affect the
use of some trademarks does not penalize trademark registration.  Section 35(3) also has a similar
effect.
4. We understand that the Geographical Indications Act 1994 including a minor amendment is
not in force yet.  Furthermore, it is our understanding that the New Zealand Ministry of CommerceIP/Q2/NZL/1
Page 6
has prepared draft Regulations setting out detailed rules for the implementation of the Act.  What is
the expected timeframe for the law and the implementing regulations to be in force?
The Geographical Indications Act 1994 has been passed and the Geographical Indications
Regulations are currently being prepared.  When the Regulations are completed, a commencement
order will bring the Act into force.  The Ministry  of Commerce, together with Land Information New
Zealand, is currently finalizing Regulations which will enable the Act to be brought into force.  It isanticipated that these Regulations, and the Geographical Indications Act, will come into force early
in 1997.
5. Is the period of grace for payment of fees for maintenance of geographical indication rights
shorter than six months under New Zealand law (Artic le 5bis of the Paris Convention in conjunction
with Article 2.1 of the TRIPS Agreement)?
The Geographical Indications Act has no requirement for a fee for maintenance of
geographical indications.  A geographical indication will remain on the Geographical IndicationsRegister indefinitely, or up to the point where there is a successful application to either remove or
alter the name.
6. Who is to be deemed an interested party in relation to the use of false geographical
indications under New Zealand law (Article 10(2) of the Paris Convention in conjunction with
Article 2.1 of the TRIPS Agreement)?
Enforcement action against a party in respect to any geographical indication, registered under
the Geographical Indications Act, is by way of Section 9 of the Fair Trading Act through either
New Zealand's High Court or District Court.  There is no specific requirement in the Fair Trading Act
that the person taking action be an "interested party".  Precedent indicates that, when an action is
brought under the Fair Trading Act, the Courts adopt a liberal approach as to who can bring an action.Although the Court has a discretion to prevent the bringing of vexatious proceedings, this discretion is
not used when, on the face of it, there is a breach of the Act, particularly if there is a public interest in
having the case heard.
7. Is the definition of geographical indication under New Zealand law to be interpreted as
referring to a given quality, reputation or other characteristic of the good which is essentiallyattributable to its geographical origin, in accordance with Article 22.1 of the TRIPS Agreement?
The Geographical Indications Act provides a definition of the term "geographical indication"
that is wider than the definition set out in the TRIPS Agreement.  The scope of protection available
under the Geographical Indications Act is not restricted to geographical indications identifying a good
where a given quality, reputation or other characteristic is attributable to the geographical origin of thegood.  However, considerations relating to the need to protect the quality, reputation or other
characteristics of a good, arising from a geographical indication in New Zealand, is likely to be one of
the motivating reasons for seeking protection for a geographical indication under the Act.
New Zealand notes that the TRIPS Agreement merely imposes minimum standards and that it is open
to countries to provide more extensive protection than that required by the TRIPS Agreement in order
to prevent misleading or deceptive use of geographical indications, provided the additional protection
is consistent with any further World Trade Organization obligations.
8. Does New Zealand law intend to provide for the legal means or administrative action for
interested parties to prevent use of geographical indications identifying wines or spirits for wines or
spirits not originating in the place indicated in the geographical indication in question, even where
the true origin of the goods is indicated or the geographical indication is used in translation orIP/Q2/NZL/1
Page 7
accompanied by expressions such as "kind", "type" , "style", "imitation" or the like, and, if so, when
and on what terms (Article 23.1 of the TRIPS Agreement)?
Protection, in these circumstances, is provid ed under Section 4(2) of the Geographical
Indications Act and Section 9 of the Fair Trading Act 1986.
Section 4(2) of the Geographical Indications Act provides that where a person in trade uses in
relation to any specified good a protected geographical indication:
- together with the true geographical origin of the goods (Section 4(2)(a));
- in translation (Section 4(2)(b));  or
- accompanied by any of the words "kind", "typ e", "style", "imitation", or any similar
word or expression (Section 4(2)(c)),
and the goods did not originate in the geographical origin to which the protected geographical
indication relates, then that person will be in breach of Section 9 of the Fair Trading Act.  This
Section states:
"MISLEADING AND DECEPTIVE CONDUCT GENERALLY --
No person shall, in trade, engage in conduct that is misleading or deceptive or is
likely to mislead or deceive."
[Follow-up question from the EC]
Section 4(2) of the Geographical Indications Act protects geographical indications whether
or not the use of the protected geographical indications is in a translation or accompanied by any of
the words "kind", "type", "style", "imitation" or any similar word or expression.  Is the understanding
correct that any violation of Section 4(2) would le ad to an automatic breach of Section 9 of the Fair
Trading Act (which refers to "misleading or deceptive")?
Any breach of Section 4(2) of the Geographical Indications Act 1994 will be deemed to be a
contravention of Section 9 of the Fair Trading Act 1986.
9. Does New Zealand intend to provide that the registration of a trademark for wines or spirits
containing or consisting of a geographical indication shall be refused or invalidated with respect to
wines or spirits not having this origin, in accordance with Article 23.2 of the TRIPS Agreement and, if
so, when and on what terms?
New Zealand does provide for the above.  New Zealand has implemented Article 23.2
through Section 16(1) of the Trade Marks Act, Sect ion 4(1) of the Geographical Indications Act and
Section 9 of the Fair Trading Act.  Section 16(1) of the Trade Marks Act provides:
"(1) It shall not be lawful to register as a trade mark or part of a trade mark any
scandalous matter or any matter the use of which would be likely to deceive or causeconfusion or would be contrary to law or morality or would otherwise be disentitled
to protection in a Court of Justice."IP/Q2/NZL/1
Page 8
Section 4(1) of the Geographical Indications Act provides that a person shall be deemed to
have contravened Section 9 of the Fair Trading Act where that person:
"... uses, in relation to any specified goods, a protected geographical indication and
the goods did not originate in the geographical origin to which the protected
geographical indication relates."
Section 41 of the Trade Marks Act also provides for a general power to rectify entries on the
Trade Marks Register.
The Commissioner of Trade Marks will not register geographical indications as a trademark,
where clearly a geographical indication is intended to be used in a misleading or deceptive manner or
in a manner which would contravene Section 4(1) of the Geographical Indications Act.
Section 35(1) of the Trade Marks Act is also relevant in that it provides for the removal from
the Register of a trademark which has not been used for five years.
It can be noted that all marks registered before the Geographical Indications Act comes into
force will be "grand-parented" and will exist in the form they were accepted in.
10. Section 5(3) of the New Zealand Geographical Indications Act states that the use of a
geographical indication in relation to goods "if the goods were produced before the goods were
declared to be specified goods" does not infringe the right of a geographical indication.  Could the
Government of New Zealand explain how this complies with Section 3 of Part II of the TRIPSAgreement?
New Zealand complies with Section 3 of Part II of the TRIPS Agreement because New
Zealand's legislation meets the requirements of Article 24.4.  Article 24.4 provides an exception to
Section 3 where nationals or domicilaries have used that geographical indication in a continuous
manner with regard to the same or related goods or services in the territory of that Member either:
- for at least ten years preceding 15 April 1994;  or
- in good faith preceding that date.
Section 5(3) of the Geographical Indications Act meets the requirements of Article 24.4.
[Follow-up question from the EC]
In its answer, New Zealand states that Section 5(3) of the Geographical Indications Act meets
the requirements of Article 24.4 of the TRIPS Agr eement, but New Zealand does not mention whether
the time-limits as foreseen in Article 24.4 are also applied.  Could New Zealand clarify this?
The time limits mentioned in Article 24.4 of the TRIPS Agreement have not been imported
into Section 5(3) of the Geographical Indications Act 1994.  Regardless of the time limits, any person
using a geographical indication to indicate the origin of goods where those goods did not originate inthat geographical indication, is likely to breach Section 9 of the Fair Trading Act which prohibits
misleading or deceptive conduct.
It is noted that Section 9 of the Fair Trading Act has been used successfully in the past to
protect geographical indications.IP/Q2/NZL/1
Page 9
It is also noted that there is very little use of overseas geographical indications on wine products
produced in New Zealand.
11. Does New Zealand's geographical indications law provide for an exemption for geographical
indication protection where a trademark has been applied for or registered in good faith, or where
rights to a trademark have been acquired through use in good faith before the entry into force of the
WTO Agreement  in relation to New Zealand, as provided for in Article 24.5 of the TRIPS
Agreement?
Yes, see our answer to initial question 10 above and Section 5(2)(c) of the Geographical
Indications Act.  Section 5(2)(c) provides that the registered proprietor of a trademark can continue to
use a trademark which was applied for in good faith and which is used without any intention to
mislead or deceive, if that trademark was applied fo r or registered prior to the Act applying to the
"specified goods".  New Zealand considers that this Section complies with Article 24.5 of the TRIPS
Agreement.
[Follow-up question from the EC]
Could New Zealand clarify whether its legislation incorporates the dates as required under
Article 24.5(a) and (b) of the TRIPS Agreement?
Section 5 sets out certain exemptions, consistent with Article 24, from the restriction against
the use of geographical indications in relation to goods where the goods did not originate in that
geographical indication.
Section 5(2)(c) provides an exemption in the case  of the use, in relation to specified goods, of
trademarks applied for, registered, or used in New Zealand in good faith prior to the goods beingdeclared specified goods.  No goods have yet been declared specified goods.
Section 16(2) of the Trade Marks Act provides that it is unlawful to register a trademark if the
use of that trademark would be prohibited under the Geographical Indications Act 1994.  This
provision came into force on 2 September 1996.
New Zealand therefore complies with Article 24.5, including the specified time limits.
IV. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
1. Please explain whether the nature of goods or services to which a trademark is to be applied
can serve as an obstacle to the registration of the mark under New Zealand law.  If so, please identify
and explain the subject matter excluded under this authority;  the relative provisions of New Zealand
law that serve as a basis for these exclusions;  and how this practice complies with Article 15.4 of the
TRIPS Agreement .
The nature of the goods or services to which a trademark is to be applied do not serve as an
obstacle to the registration of the mark under the Trade Marks Act 1953.  Therefore, there is nosubject matter to identify and New Zealand complies with Article 15.4 of the TRIPS Agreement.  (We
would note, however, that there is an exception in the above when a trademark applied for involves ageographical indication.  This exception is in accordance with the TRIPS Agreement.)
2. Please explain whether the trademark law of  New Zealand establishes a presumption of
likelihood of confusion in the determination of confusing similarity in cases where identical marks are
used on identical goods, as required by Article 16.1 of the TRIPS Agreement.  If so, please identify
and explain the legal basis for this presumption.IP/Q2/NZL/1
Page 10
Section 17 of the Trade Marks Act 1953 (as amended by Section 9 of the Trade Marks
Amendment Act 1994) establishes that, where identical marks are applied for on similar or identical
goods, a likelihood of confusion is presumed.  When this presumption is made, there are several
options for the application.  The Commissioner of Trade Marks can either:
- refuse registration of the mark under Section 16(1);
- permit the registration subject to conditions and limitations under Section 17(5);  or- require that, if the mark is registered, it is registered as an associated mark to the
identical or similar trademark.  This is provided for under Section 32 (as amended by
Section 16 of the Trade Marks Amendment Act 1994).
3. Please explain whether and in what regard the provisions concerning acts constituting
infringement of a registered trademark specified in Section 10 of the New Zealand Trade Marks Act
apply to holders of trademarks registered for servic es. Please provide relevant information regarding
administrative or judicial decisions addressing this issue.
Generally, New Zealand law makes no distinction between marks registered for services and
those registered in respect of goods.  As your question notes, Section 10 relates to the ways in which
properly marked goods may not be subsequently treated, if a written contract exists making the
conditions for treatment of the goods explicit.  This does not prevent appropriate contracts being
entered into in relation to trademarks for services.  In this case, contractual remedies would apply.New Zealand has no reported cases on Section 10.
4. Section 17 of the New Zealand Trade Marks Act does not address or define "well-known"
trademarks.  Please explain how well-known marks are defined under New Zealand law and how
New Zealand has implemented Articles  16.2 and 16.3 of the TRIPS Agreement.
While there is no statutory definition of "well-known mark" in the Trade Marks Act 1953, the
Act does still address "well-known" trademarks.  Section 17(2) of the Trade Marks Act 1953, as
amended by Section 9(1) of the Trade Marks Amendment Act 1994, reads:
"(2) Subject to sub-section (5) of this section, no trade mark shall be registered  in
respect of any goods if the trade mark (or an essential element) is identical or similar
to a translation trade mark which is well known in New Zealand (whether through
advertising or otherwise)  -
(a) As respects those goods or any similar goods;  or
(b) As respects any other goods if the use of the first-mentioned trade mark
would be taken as indicating a connection in the course of trade between
those other goods and the proprietor of the well known trade mark, andwould be likely to prejudice the interests of such proprietor, --
where use of the first-mentioned trade mark would be likely to deceive or cause
confusion."  [ emphasis added ]
(Section 17(4) is the corresponding section relating to service marks.)
Although there is no statutory definition of "well- known" trademark, there is guidance in the
statute, i.e. well-known "in New Zealand" and "whe ther through advertising or otherwise".  Further,IP/Q2/NZL/1
Page 11
the flexibility inherent in not having a definitio n of "well-known" mark ensures that the factors
mentioned in Article 16.2 of the TRIPS Agreement can be taken into account.  For example, in New
Zealand, it is Patent Office practice to take account of usage, case law and other evidence filed, in
determining whether or not a mark is well-known.
We would also note that Sections 17(2) and (4 ) are not limited to "well-known trademarks"
that have been registered.  The wording "through advertising or otherwise" clearly covers non-registered marks.  Section 17, therefore, prohibits registration of marks identical or confusingly
similar to well-known marks, whether those well-known marks are registered or not.
New Zealand complies with Article 16.3 of the TRIPS Agreement through Section 32, which
provides that the Commissioner of Trade Marks may require that marks be registered as associated
marks if a connection between goods or services is indicated.  The Fair Trading Act 1986 and the
common law tort of passing off also provide protection where use of the mark is misleading or
deceptive or likely to cause confusion.
[Follow-up questions from the US]
(a) If an unregistered well-known mark is to be protected under the common law tort of passing
off, must the mark be "in use" in New Zealand?  Al so, must this "use" be a use in the ordinary course
of trade?  If the mark is an unregistered well-known mark, can it be protected under this tort, based
solely on its reputation?
Unregistered well-known marks may be protected under the common law tort of passing off.
The common law tort of passing off has been expanded over time beyond cases where goods of a
trader are merely passed off as the goods of another.  New Zealand courts have been prepared to
recognize that the owner of a trademark or trade name may suffer loss caused as a result of consumers
confusing products of one trader with the products of another trader, even though there is no directcompetition between the two products.  Damages ha ve been awarded for dilution in the value of a
name, mark or get up.
The extent to which an unregistered well-known mark can be protected by the common law
tort of passing off, even though it is not "in use" in New Zealand, will depend on the facts of the
individual case.  In particular, the courts will consider the extent of the reputation and any goodwillassociated with the well-known mark in New Zealand.
It is possible that an unregistered well-known mark will be protected under the common law
tort of passing off, based solely on its reputation.  We note that the Fair Trading Act 1986 may also
protect well-known marks not being used in New Zealand.
(b) What provisions of the Fair Trading Act of 1986 protect well-known marks?  Is there case
law interpreting and applying these provisions?
Sections 9 and 16 of the Fair Trading Act would both be used to protect well-known marks.
Section 9 prohibits misleading or deceptive conduct generally.  Section 16 is directed at persons in
trade who forge any trademark;  falsely apply to g oods any trademark;  or falsely use in relation to
services any trademark.  Section 16 covers well-known marks that may not be registered in New
Zealand.
There are several cases which have precedent value in this area.IP/Q2/NZL/1
Page 12
5. Please indicate whether, under New Zealand trademark law, a party is prohibited from
registering a mark that is identical or confusingly similar to a well-known mark that is unregistered.
If so, please provide an explanation of the legal basis for this conclusion.
Please see our answer to question 4 above.
6. Please describe the methods by which indust rial designs are protected in New Zealand, in
particular:
(a) the form or forms of intellectual property used to protect the design
(e.g., patent, copyright, sui generis);
(b) the conditions that must be satisfied to obtain the grant of such protection
(e.g., whether designs must be new or original and the parameters of these concepts),
and a brief description of the registration or granting procedure;
(c) the nature of the rights granted and the term of protection provided;   
(d) the nature of remedies available to the owner of each type of protection, including a
description of the conditions that may be imposed (e.g., whether commercial use isrequired);  and
(e) whether any exceptions to protection or rights exist for each type of intellectual
property involved.
(a) The main areas for protection of industrial designs are under the Designs Act 1953 and the
Copyright Act 1994.  Other forms of protection may be available in some circumstances,
namely:
- If the design is "functional" in shape, patent protection under the Patents Act 1953
may be available.
- Some protection may be available under the Trade Marks Act 1953 as a "shape" may
now be registered as a trademark.
(b) The remaining sections of this question ((b) - (e)) will be answered with respect to the
protection afforded by the Designs Act 1953 and the Copyright Act 1994 as they are the main
vehicles affording protection for designs.
To be registrable under the Designs Act 1953, an application for a design right must:
- Show that the design fits within the definition of "design" under Section 2 of the
Designs Act 1953, namely:
"features of shape, configuration, pattern, or ornament applied to an
article by any industrial process or means, being features which in thefinished article appeal to and are judged solely by the eye;  but does
not include a method or principle of construction or features of shape
and configuration which are dictated solely by the function which the
article to be made in that shape or configuration has to perform."
- State that it is "new or original" in the sense used in the Designs Act (Section 5(2)),
namely that it is different from any other design that has been available to theIP/Q2/NZL/1
Page 13
New Zealand public before the priority date of the application.  How much and in
what ways the design has to be different, will be a matter of judgement in each case
and will depend mainly on what type of article the design is to be applied to.
However, generally, protection extends to a design to the extent that it meets the
standard of originality.  Consequently, any design "not substantially different" from
the registered design will be deemed to infringe the copyright in the design.
When design registration is applied for, the applicant must file a statement of novelty
(apart from applications to register designs in respect of textile articles, wallpaper or
lace).  The applicant must decide in what features the novelty resides.  If no specific
features of shape, configuration, pattern or ornamentation are specified, then the
scope of registration relates to the design as a whole.
The Act makes provision for situations of confidential disclosure, where an
application shall not be invalidated by reason only of that disclosure.
- Ensure that the application fulfils all the formalities, namely:
- the application form includes name, nationality and address of the applicant;
- the application fee is paid;
- the required number of representations are supplied (four) and the name of
the article is correct;  and
- where appropriate, correct Convention documentation is supplied.
Copyright protection for industrial designs under the Copyright Act 1994 has the
following features:
- copyright applies to original artistic works and works of artistic
craftsmanship;  and
- copyright protection is free and automatic, i.e. there are no formalities
attached.
(c) The nature of the rights granted and period of protection provided under designs and
copyright laws are similar.
- Sections 11 and 12 of the Designs Act 1953 state the rights and duration of protection
given by design registration, namely:
- The registration of a design gives the registered proprietor copyright in the
design, i.e.,
"the exclusive right in New Zealand to make or import for
sale or for use for the purposes of any trade or business, or tosell, hire, or offer for sale or hire, any article to which the
registered design or a design not substantially different from
the registered design has been applied, and to make anything
for enabling any such article to be made as aforesaid,
whether in New Zealand or elsewhere."IP/Q2/NZL/1
Page 14
- Copyright in a registered design subsists for a period of five years from the
date of registration.  The Commissioner can then extend the period for a
second period of five years from the expiration of the original period and for
a third period of five years from the expiration of the second period, onapplication and on payment of the prescribed fee.
- The Copyright Act 1994 provides that the owner of an artistic work has the exclusive
right to do, inter alia,   the following acts in New Zealand;  copy;  issue copies to the
public;  show works;  and make adaptation of works (Section 16).  Further, the
Copyright Act 1994 provides that copyright in artistic works expires at the end of50 years from the end of the calendar year in which the author dies (Section 22)
unless the artistic work is industrially applied (Section 75) in which case 16 years or
25 years applies.
(d) New Zealand proposes to answer this question in its notification on enforcement.
4
(e) There are no relevant exceptions to protection under the Copyright Act 1994. However,
Regulation 33 of the Designs Regulations 1954 provides that some designs are excluded from
protection under the Designs Act 1953.  The excluded works are:
"(a) Works of sculpture other than casts or models used or intended to be
used as models or patterns to be multiplied by any industrial process;
(b) Wall plaques and medals;
(c) Printed matter primarily of a literary or artistic character, including
bookjackets, calendars, certificates, coupons, dress-making patterns,
greeting cards, leaflets, maps, plans, postcards, stamps, trade
advertisements, trade forms, and cards, transfers, and the like."
7. Please explain how textile designs are protected under your law.
Textile designs are protected under the Designs Act 1953.  As noted above, design includes a
requirement that a design fall within "features ... or ornament applied to an article by any industrial
process or means".  Textile articles are, therefore, registrable where the textile material is able toperform a function other than just being the vehicle for the imprint of the design.  For example, if the
subject of the application was wallpaper, it would need to be able to cover cracks in walls or enhance
the decor of a room to be registrable.
Protection is also available for textiles under the Copyright Act.  Textiles may qualify either
as an artistic work or as a special type of artistic work, i.e. a work of artistic craftsmanship.
8. Please explain whether legal means are provided under New Zealand law to refuse or
invalidate the registration of misleading geographical indications and, if not, how New Zealand lawis consistent with Article 22.3 of the TRIPS Agreement.
                                                     
4 Subsequent to this response, the responses from New Zealand to the Checklist of Issues on Enforcement
(document IP/C/5) were submitted and di stributed in document IP/N/6/NZL/1.IP/Q2/NZL/1
Page 15
New Zealand does provide for the above.  New Zealand has implemented Article 22.3 of the
TRIPS Agreement through Section 16(1) of the Trade Marks Act, Section 4(1) of the Geographical
Indications Act and Section 9 of the Fair Trading Act.  Section 16(1) of the Trade Marks Act
provides:
"(1) It shall not be lawful to register as a trade mark or part of a trade mark any
scandalous matter or any matter the use of which would be likely to deceive or causeconfusion or would be contrary to law or morality or would otherwise be disentitled
to protection in a Court of Justice."
Section 4(1) of the Geographical Indications Act provides that a person shall be deemed to
have contravened Section 9 of the Fair Trading Act where that person:
"... uses, in relation to any specified goods, a protected geographical indication and
the goods did not originate in the geographical origin to which the protected
geographical indication relates."
Section 41 of the Trade Marks Act also provides for a general power to rectify entries on the
Trade Marks Register.
The Commissioner of Trade Marks will not register geographical indications as a trademark,
where clearly a geographical indication is intended to be used in a misleading or deceptive manner or
in a manner which would contravene Section 4(1) of the Geographical Indications Act.
Section 35(1) of the Trade Marks Act is also relevant in that it provides for the removal from
the Register of a trademark which has not been used for five years.
It can be noted that all marks registered before the Geographical Indications Act comes into
force will be "grand-parented" and will exist in th e form they were accepted in, provided the mark
was registered and used in good faith.
9. Please explain how, in the absence of an un fair competition statute, New Zealand law
complies with Article 22.2 of the TRIPS Agreement, which requires that with respect to geographical
indications legal means be provided to prevent any use which constitutes an act of unfair competition
within the meaning of Article 10bis of the Paris Convention.
Article 22.2 of the TRIPS Agreement requires that legal means shall be provided for
interested parties to prevent the false or misleading use of geographical indications and to prevent any
use which constitutes an act of unfair competition within the meaning of Article 10 bis of the Paris
Convention (1967).
The Geographical Indications Act provides that, if a person uses a protected geographical
indication and the goods did not originate in the geographical origin to which the protectedgeographical indication relates, the person shall be deemed to have contravened Section 9 of the Fair
Trading Act 1986.
The relevant provision in the Fair Trading Act states that no person shall, in trade, engage in
conduct that is misleading or deceptive or is likely to mislead or deceive.  Therefore, under the
Geographical Indications Act, if someone is deemed to have contravened Section 9 of the Fair
Trading Act, an interested party may apply to the High Court for an injunction restraining the offender
from using the protected geographical indication in a misleading or deceptive manner.IP/Q2/NZL/1
Page 16
While geographical indications may be protected under the Geographical Indications Act, it is
the Fair Trading Act which provides the legal means for interested parties to prevent the misleading or
deceptive use of geographical indications or acts of unfair competition.
It is useful to note that the Geographical Indications Act only protects those geographical
indications which are registered under the Act.  However, the Fair Trading Act can provide protection
for geographical indications not registered under the Geographical Indications Act by prohibiting anyfalse or misleading representations that goods are of a particular kind, standard, quality or any false or
misleading representations concerning the place of origin of the goods.  Again, the Fair Trading Act
provides legal means for interested parties to take action in relation to any false or misleading use of
geographical indications which are not protected under the Geographical Indications Act.  The Fair
Trading Act has been successfully used for this purpose in the past.
10. Under New Zealand law, the registration of a mark that is identical or similar to a well-
known mark that is used in relation to the identical or similar goods or services can be prevented.
Please explain whether the owner of a well-known mark in relation to goods or services can also
prevent the use  of the well-known mark by third parties, consistent with Article 16.3 of the TRIPS
Agreement.
Right holders of well-known trademarks can prevent the use of their marks through
Section 17 of the Trade Marks Act 1953 (via Sections 8 and 9 if they are registered marks);  the FairTrading Act 1986;  and by claiming, under common law, that the marks have been passed off.
V. REPLIES TO QUESTIONS POSED BY JAPAN
1. In your country, where the provisions on the "Crown use" are applied, some restrictions are
imposed on the owner of a protected industrial design:   for example, licence fees will not be paid to
the owner of a registered design.  Is there any possibility that the legitimate interests of a right holdercan be unreasonably prejudiced within the meaning of Article 26.2 of the TRIPS Agreement?
There is no possibility that the Crown will unreasonably prejudice the legitimate interests of
right holders.  The Designs Act 1953 requires that, if the Crown were to decide to use a registered
design, the Crown has to notify the right holder as soon as practicable after the use is begun
(Section 16(5)) unless it is contrary to the public inte rest to do so.  Further, any use by the Crown of a
design must be on terms agreed upon between the Crown and the registered proprietor.  Where terms
are not agreed, the registered proprietor of a design has the option of petitioning the Court for relief
under Section 18.
New Zealand would note, however, that the Crown use provisions have not been used.
However, if they were to be used, it would be in a situation where "normal exploitation" of the designwas not occurring.  As such, the Crown use provisions are compatible with Article 26.2 of the TRIPS
Agreement.
2. In your country, the first duration of protection available is less than ten years and any
renewal thereafter cannot be requested at the time of registration.  It may happen, therefore, that the
duration of protection is less than ten years when the first duration has lapsed and the restoration is
not permitted afterwards.  Would this not be cont rary to the spirit of  Article 26.3 of the TRIPS
Agreement?
The three times five-year formula for the term of design protection in the New Zealand
Designs Act 1953 is not inconsistent with the spirit of the TRIPS Agreement.  We would note that
Article 26.3 of the TRIPS Agreement reads:
"The duration of protection available  shall amount  to at least ten years."  [ emphasis added ]IP/Q2/NZL/1
Page 17
The total period of protection for a design in New Zealand is 15 years, available as three
five-year periods.  There can be no argument that the total period of protection available is greater
than ten years.  The New Zealand Designs Act, therefore, complies with Article 26.3 of the TRIPS
Agreement.  We would note that the three times five-year formula offers designers and manufacturers
an opportunity to register their designs cheaply, rather than paying for an extended period of
protection that they may not require if their designs prove not to be commercially viable.
It is possible that failure to pay the requisite fee within the set period could result in the
protection ceasing prior to a ten-year period.  Howe ver, if the design right holder complies with the
requirements of the Act, the ten-year period is available as required by the TRIPS Agreement.  We
would note that, as a matter of courtesy, the New Zealand Patent Office informs private applicants of
the need to pay the five-yearly renewal fees at the outset and that there is an opportunity to apply for a
six month extension of the date that the fees fall due (provided for in Section 12 of the Designs
Act 1953).
The need for a formal restoration procedure in the designs law has been recognized in the
recent review of the Designs Act 1953 which has been undertaken.  It will be considered as part of the
planned reform of the Designs Act.5
It is also important to note that in New Zealand very few designs are registered, because the
Copyright Act 1994 provides designers and manufacturers with a more extensive period of protection(16 years for industrially applied artistic works and 25 years for industrially applied works of artistic
craftsmanship).  This form of protection is preferred in New Zealand, because it is free and automatic
for all original designs and no formalities need to be satisfied.
                                                     
5 See the introductory statement reproduced under I above.