Enforcing Your Trade Mark Rights in New Zealand

Securing a registered trademark is a major milestone for any business. It transforms your brand from an intangible concept into a protectable asset. However, registration is only the first step. In New Zealand, the government does not police the marketplace for you, once you own a trademark, the responsibility for monitoring its use and stopping infringement falls squarely on your shoulders.

Civil Enforcement

For most businesses, the primary method of stopping infringement is through civil proceedings under the Trade Marks Act 2002. This involves taking a private legal action against the infringer in the courts.

The New Zealand High Court has a wide arsenal of remedies available to compensate trademark owners who have been wronged. If you can prove infringement, the court can order measures designed not just to punish the infringer, but to restore your business to the position it would have been in had the infringement not occurred.

Usually, the civil remedies include-

• Injunctions: This is often the most immediate goal. An injunction is a court order that legally forces the infringer to stop using your trademark immediately.
• Damages: The court can order the infringer to pay monetary compensation for the loss your business suffered due to their actions.
• Account of Profits: Alternatively, you may seek an “account of profits”. This requires the infringer to hand over the profits they made by unlawfully using your brand, rather than paying for your specific losses.
• Delivery Up: The court can order the infringer to deliver any infringing goods, labels, or marketing materials to you (or to be destroyed), ensuring they cannot be sold or used again.

While these remedies are powerful, they require you to initiate the action. We recommend consulting with legal professionals early to assess the strength of your case before engaging with the court system.

Criminal Offences

In severe cases, trademark infringement crosses the line from a civil dispute to a criminal offense. The Trade Marks Act 2002 contains specific criminal provisions targeting the counterfeiting of registered trademarks and the infringement of copyright works for commercial gain.

The penalties for these offenses are significant, reflecting the seriousness with which New Zealand law treats IP theft. A person convicted of counterfeiting a registered trademark for commercial gain faces imprisonment for up to five years or a fine of up to NZ$150,000.

While the New Zealand Police have the authority to investigate and prosecute these matters, the Ministry of Business, Innovation and Employment (MBIE) also plays a central role. The Chief Executive of MBIE is empowered to prosecute offenses related to manufacturing, importing, and selling counterfeit goods.

MBIE’s Prosecution Policy

MBIE does not prosecute every case. It operates under strict prosecution guidelines to ensure resources are used effectively. When MBIE receives a complaint, they apply a two-stage test: the Evidential Test and the Public Interest Test.

The Evidential Test, i.e. before proceeding, MBIE must be satisfied that there is sufficient credible evidence to support the conviction. This includes identifying the offender, ensuring witnesses are reliable, and determining if there is an objectively reasonable prospect of proving the offense beyond reasonable doubt.

The Public Interest Test, i.e. even if the evidence is solid, MBIE will only prosecute if it is in the public interest. They weigh several factors, which include-

• Is there a risk to public health and safety (e.g., counterfeit pharmaceuticals or electrical goods)? Is there significant financial loss to the public or the rights holder?
• Is this repeat offending? Is organized crime involved? Has the offender ignored previous “cease and desist” warnings?
• MBIE considers whether other remedies have been exhausted. Criminal prosecution is not a substitute for civil action; if you can resolve the matter through a civil lawsuit, MBIE is less likely to intervene.

The Fair Trading Act 1986

Another powerful tool in the enforcement toolkit is the Fair Trading Act 1986. This legislation is designed to protect consumers from misleading and deceptive conduct, but it effectively serves to protect brand owners as well.

The Act imposes criminal liability for forging a trademark, falsely applying a trademark or a sign that so nearly resembles an existing mark that it is likely to mislead or deceive and trading in products with misleading trade descriptions.

While the Commerce Commission enforces the Fair Trading Act, they generally focus on issues that affect competition in the market rather than taking civil actions on behalf of individual businesses. However, businesses can bring their own civil actions under this Act through the Disputes Tribunal or the District Court to seek compensation for deceptive trading practices that damage their brand.

Border Control

One of the most effective ways to protect your market is to stop infringing goods before they even enter the country. New Zealand has robust border enforcement measures that align with international obligations under the TRIPS and CPTPP agreements.

The New Zealand Customs Service (Customs) has the power to detain suspected infringing goods at the border. However, this protection is not automatic, you must actively request it.

The Customs Notice System

To utilize this service, rights holders must lodge a formal notice with Customs regarding their registered New Zealand trademarks. This notice alerts Customs to your rights and requests that they detain any goods suspected of infringing your mark.

When you file a notice, you must provide a letter of indemnity. This covers any costs Customs might incur while enforcing your notice, such as storage or destruction fees. You can request that a notice remain in force for up to five years. It will remain valid as long as your trademark registration is active and has not been revoked or cancelled.

That said, once Customs intercepts suspected goods, they will notify you. They can detain the goods for ten working days. During this window, you must assess whether the goods are indeed infringing and, if necessary, commence legal proceedings against the importer. If you do not take action within the ten-day period, Customs is legally required to release the goods to the importer.

Customs also has the discretion to detain goods for three working days even without a pre-existing notice. In this scenario, they will contact you and invite you to file a notice immediately. If you fail to do so within three days, the goods are released.

That said, these border measures apply to commercial imports and exports, they do not apply to parallel imports brought in for a person’s private and domestic use.

Geographic Scope

New Zealand’s influence extends into the Pacific, but trademark protection in these territories works differently from the mainland. The Trade Marks Act 2002 does not expressly extend protection to the Cook Islands, Niue, or Tokelau. However, local laws in these territories create a unique dependency on New Zealand registrations.

Niue and Tokelau, i.e. through the operation of their own laws, trademarks registered in New Zealand under the Trade Marks Act 2002 are generally considered protected in both Niue and Tokelau.

The Cook Islands, i.e. where situation in the is distinct. New Zealand trademark protection under the current 2002 Act does not extend to the Cook Islands. However, older trademarks that were registered under the repealed Trade Marks Act 1953 do continue to enjoy protection there.

International Registrations (Madrid Protocol), i.e. if you have registered your trademark in New Zealand via the international Madrid System (designating New Zealand), this protection does not automatically extend to the Cook Islands, Niue, or Tokelau. If your business operates in these specific territories, you must seek specific advice on securing rights there directly.

How can we help?

Protecting your trademark is an active, ongoing process. From filing Customs notices to ensure your perimeter is secure, to engaging with MBIE on serious counterfeiting matters, having a proactive strategy is essential.

We act as your partners in this process. We can help you assess whether a civil or criminal approach is best for your situation, liaise with Customs to set up border notices, and navigate the specific jurisdictional nuances of the Pacific Islands. If you suspect your rights are being infringed, contact us immediately to discuss your options.