Checklist of Issues on Enforcement under TRIPS Art. 63.2 - View details of the document

New Zealand

(a) Civil judicial procedures and remedies

District Court: These are courts of first instance and have extensive civil and criminal jurisdictions. High Court: The High Court exercises jurisdiction in cases of major crimes, the more important civil claims, appeals from lower courts and tribunals, and reviews of administrative actions. Court of Appeal: The primary function of the Court of Appeal is to determine ordinary appeals from the High Court. Certain other proceedings in the lower courts may, by order of the High Court, be removed to the Court of Appeal. The Court also has some original jurisdiction. Judicial Committee of the Privy Council: This is the final appeal tribunal for New Zealand. Appeals to the Privy Council may be brought by leave of the Court of Appeal, or by special leave of the Privy Council itself. Leave is granted as of right from any final judgment of the Court of Appeal, where the matter in dispute amounts to the value of $5,000 or more, or involves directly or indirectly some claim to property, or some civil right exceeding that value. The Privy Council has a discretionary power to grant special leave to appeal in criminal cases. Such leave is not commonly granted in criminal appeals from New Zealand. It should be noted that a Bill has been introduced into the New Zealand Parliament which would abolish the right of appeal to the Privy Council.

In general, the persons having standing to assert IPRs are those with a direct interest such as the registered proprietor or licensee in the case of patents, trade marks and designs or as the IPRs owner in the case of copyright. Other parties may also have rights, for example, a registered user of a trade mark or an exclusive licensee in the case of a copyright. In respect to geographical indications, there is no specific requirement under the Fair Trading Act 1986 (under which enforcement action is taken in respect to geographical indications) 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. Individuals may either represent themselves or be represented by a lawyer. Bodies corporate are represented by a lawyer. There are no requirements for mandatory personal appearances before the court by the right holder.

The courts can order a party to produce evidence which lies within its control by the issue of an order for "discovery". In response to the order, the opposing party must provide the plaintiff with a list which details the documents which are held, documents no longer held, and other relevant documents known to the party. A discovery order can be for general discovery, relate to specific matters, or require that documents or objects be produced to the Court.

The courts can protect confidential information in two ways: A party providing information under discovery can claim privilege. There are a number of grounds on which privilege can be claimed, for example, the information comprises communications between a client and lawyer (legal professional privilege). A court can impose confidentiality orders in respect to information, for example, preventing the reporting of the contents of a document or only permitting certain people of the other party to the proceedings to view the information, for example, the legal advisors or technical experts.

I. INJUNCTIONS The courts have wide ranging powers in respect to injunctions. Both interlocutory (interim) and permanent injunctions can be granted. The courts can grant injunctions both through their inherent jurisdiction and by way of statutory provision for injunctions. Injunctions can either be mandatory (requiring a party to act in a particular manner) or prohibitory (preventing a party acting in a particular manner). In respect to interlocutory injunctions, the following points should be noted: They are interim only. Where a case goes to a substantive hearing, they will generally only last until judgment is given in the case. They can be granted unilaterally, i.e. ex parte, or where both parties have been included, i.e. inter parties. Whether or not an interlocutory injunction will be granted depends on a determination of well accepted principles. In essence, the courts consider: whether there is a serious question to be tried; if there is a serious question, whether damages will compensate the applicant in the absence of an interlocutory injunction; if an injunction should be granted, whether the applicant can provide an undertaking to pay damages to the defendant should the applicant's case not succeed; and where the case is evenly weighted, the balance of convenience in granting the interlocutory injunction. A special form of interlocutory injunction is the Mareva injunction (so called because of the English case which first saw such injunctions granted). In essence, such an injunction is granted to protect the assets involved in a case. The grant of such an injunction is dependant on a number of formalities being met. Statutory provision and limitations in respect to injunctions concerned with IPR infringements exist in the Patents Act 1953, the Fair Trading Act 1986 (with respect to trade marks and geographical indications), the Trade Marks Act 1953, the Copyright Act 1994; and the Layout Designs Act 1994. II. DAMAGES Damages, include recovery of profits, and expenses, including attorney's fees. Wide powers exist for the award of damages. Specific statutory provision concerning damages (and account for profits) in cases of IPR infringements exist in respect to copyright, layout designs, patents and trade marks. The courts have the power to award costs to a successful party which can take into account legal costs. III. DESTRUCTION Provision exists for the courts to order the destruction or other disposal of infringing goods and materials in respect to trade marks and copyright works (including infringements of performers' rights). IV. OTHER REMEDIES In copyright cases, a court may order on a request by a copyright owner that where a person has in their possession, custody or control an infringing copy or an object designed or adapted for making infringing copies there be delivery up of the infringing copy or object. Such an order can be made by a court on an ex parte application where service of the notice would result in undue delay.

As part of their inherent jurisdiction, the courts can make an order requiring the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the goods or services found to be infringing.

Defendants can be indemnified by way of damages or compensation. Judges are not liable for acts done in the course of fulfilling their duties. In respect to infringing copyright work and infringing trade mark goods, action cannot be taken against New Zealand Customs unless they have acted otherwise than in good faith.

The length and cost of proceedings will vary with each case. Factors which can influence length and cost are the number of parties involved, the complexity of the proceedings and the geographical location of the proceedings. No specific data is available on actual duration of proceedings and costs. It should be noted that an application for an ex parte application can be heard and granted very quickly.

(b) Administrative procedures and remedies

No provision exists for administrative decisions on the merits of an IPR's infringement case.

(a) Judicial measures

The types of provisional measures which judicial authorities may order cover interlocutory injunctions, Mareva injunctions and Anton Piller orders. Interlocutory injunctions and Mareva injunctions are discussed above in the comments on question 5. In respect to Anton Piller orders these are named after the 1976 English case in which the orders were first made. In essence, an Anton Piller order is granted ex parte and is intended to enable the applicant to enter and search a defendant's premises so as to recover infringing articles and documents before they are destroyed. Before granting an order, a court will consider whether the applicant has a strong case for believing that the evidence will be disposed of and cause damage to the applicant. A court has the power to protect the defendant's interest, for example, by requiring that the applicant give an undertaking as to damages.

The circumstances in which such measures may be ordered inaudita altera parte (ex parte) are discussed above in the comments relating to questions 5 and 10.

[Answer 5: I. INJUNCTIONS The courts have wide ranging powers in respect to injunctions. Both interlocutory (interim) and permanent injunctions can be granted. The courts can grant injunctions both through their inherent jurisdiction and by way of statutory provision for injunctions. Injunctions can either be mandatory (requiring a party to act in a particular manner) or prohibitory (preventing a party acting in a particular manner). In respect to interlocutory injunctions, the following points should be noted: They are interim only. Where a case goes to a substantive hearing, they will generally only last until judgment is given in the case. They can be granted unilaterally, i.e. ex parte, or where both parties have been included, i.e. inter parties. Whether or not an interlocutory injunction will be granted depends on a determination of well accepted principles. In essence, the courts consider: whether there is a serious question to be tried; if there is a serious question, whether damages will compensate the applicant in the absence of an interlocutory injunction; if an injunction should be granted, whether the applicant can provide an undertaking to pay damages to the defendant should the applicant's case not succeed; and where the case is evenly weighted, the balance of convenience in granting the interlocutory injunction. A special form of interlocutory injunction is the Mareva injunction (so called because of the English case which first saw such injunctions granted). In essence, such an injunction is granted to protect the assets involved in a case. The grant of such an injunction is dependant on a number of formalities being met. Statutory provision and limitations in respect to injunctions concerned with IPR infringements exist in the Patents Act 1953, the Fair Trading Act 1986 (with respect to trade marks and geographical indications), the Trade Marks Act 1953, the Copyright Act 1994; and the Layout Designs Act 1994. II. DAMAGES Damages, include recovery of profits, and expenses, including attorney's fees. Wide powers exist for the award of damages. Specific statutory provision concerning damages (and account for profits) in cases of IPR infringements exist in respect to copyright, layout designs, patents and trade marks. The courts have the power to award costs to a successful party which can take into account legal costs. III. DESTRUCTION Provision exists for the courts to order the destruction or other disposal of infringing goods and materials in respect to trade marks and copyright works (including infringements of performers' rights). IV. OTHER REMEDIES In copyright cases, a court may order on a request by a copyright owner that where a person has in their possession, custody or control an infringing copy or an object designed or adapted for making infringing copies there be delivery up of the infringing copy or object. Such an order can be made by a court on an ex parte application where service of the notice would result in undue delay.]

[Answer 10: The types of provisional measures which judicial authorities may order cover interlocutory injunctions, Mareva injunctions and Anton Piller orders. Interlocutory injunctions and Mareva injunctions are discussed above in the comments on question 5. In respect to Anton Piller orders these are named after the 1976 English case in which the orders were first made. In essence, an Anton Piller order is granted ex parte and is intended to enable the applicant to enter and search a defendant's premises so as to recover infringing articles and documents before they are destroyed. Before granting an order, a court will consider whether the applicant has a strong case for believing that the evidence will be disposed of and cause damage to the applicant. A court has the power to protect the defendant's interest, for example, by requiring that the applicant give an undertaking as to damages.]

The main procedures for the initiation, ordering and maintenance in force of provisional measures, in particular relevant time limits and safeguards, are discussed above in the comments relating to questions 5 and 10.

[Answer 5: I. INJUNCTIONS The courts have wide ranging powers in respect to injunctions. Both interlocutory (interim) and permanent injunctions can be granted. The courts can grant injunctions both through their inherent jurisdiction and by way of statutory provision for injunctions. Injunctions can either be mandatory (requiring a party to act in a particular manner) or prohibitory (preventing a party acting in a particular manner). In respect to interlocutory injunctions, the following points should be noted: They are interim only. Where a case goes to a substantive hearing, they will generally only last until judgment is given in the case. They can be granted unilaterally, i.e. ex parte, or where both parties have been included, i.e. inter parties. Whether or not an interlocutory injunction will be granted depends on a determination of well accepted principles. In essence, the courts consider: whether there is a serious question to be tried; if there is a serious question, whether damages will compensate the applicant in the absence of an interlocutory injunction; if an injunction should be granted, whether the applicant can provide an undertaking to pay damages to the defendant should the applicant's case not succeed; and where the case is evenly weighted, the balance of convenience in granting the interlocutory injunction. A special form of interlocutory injunction is the Mareva injunction (so called because of the English case which first saw such injunctions granted). In essence, such an injunction is granted to protect the assets involved in a case. The grant of such an injunction is dependant on a number of formalities being met. Statutory provision and limitations in respect to injunctions concerned with IPR infringements exist in the Patents Act 1953, the Fair Trading Act 1986 (with respect to trade marks and geographical indications), the Trade Marks Act 1953, the Copyright Act 1994; and the Layout Designs Act 1994. II. DAMAGES Damages, include recovery of profits, and expenses, including attorney's fees. Wide powers exist for the award of damages. Specific statutory provision concerning damages (and account for profits) in cases of IPR infringements exist in respect to copyright, layout designs, patents and trade marks. The courts have the power to award costs to a successful party which can take into account legal costs. III. DESTRUCTION Provision exists for the courts to order the destruction or other disposal of infringing goods and materials in respect to trade marks and copyright works (including infringements of performers' rights). IV. OTHER REMEDIES In copyright cases, a court may order on a request by a copyright owner that where a person has in their possession, custody or control an infringing copy or an object designed or adapted for making infringing copies there be delivery up of the infringing copy or object. Such an order can be made by a court on an ex parte application where service of the notice would result in undue delay.]

[Answer 10: The types of provisional measures which judicial authorities may order cover interlocutory injunctions, Mareva injunctions and Anton Piller orders. Interlocutory injunctions and Mareva injunctions are discussed above in the comments on question 5. In respect to Anton Piller orders these are named after the 1976 English case in which the orders were first made. In essence, an Anton Piller order is granted ex parte and is intended to enable the applicant to enter and search a defendant's premises so as to recover infringing articles and documents before they are destroyed. Before granting an order, a court will consider whether the applicant has a strong case for believing that the evidence will be disposed of and cause damage to the applicant. A court has the power to protect the defendant's interest, for example, by requiring that the applicant give an undertaking as to damages.]

See the comments above in respect to question 8.

[Answer 8: The length and cost of proceedings will vary with each case. Factors which can influence length and cost are the number of parties involved, the complexity of the proceedings and the geographical location of the proceedings. No specific data is available on actual duration of proceedings and costs. It should be noted that an application for an ex parte application can be heard and granted very quickly.]

(b) Administrative measures

The only situations where administrative provisional measures can be initiated are by New Zealand Customs. This is discussed below in respect to questions 15-19.

[Answer 15: Customs enforces a wide range of import prohibitions and restrictions on behalf of government departments and agencies which have the policy responsibilities for the controls. These import prohibitions and restrictions are related to the enforcement of: quarantine requirements; public safety requirements, for example, in respect to firearms, objectionable material, and explosives; consumer safety, for example, in respect to unsafe goods; and international obligations, for example, in respect to the Basel Convention. These import prohibitions and restrictions are not related to the enforcement of intellectual property rights. An application for suspension of release is only available in respect to goods which involve infringements of intellectual property rights involving counterfeit trade mark or pirated copyright goods as defined in the TRIPS Agreement. The following goods are excluded from the application of such procedures: De minimis imports and goods imported for private and domestic use. The Copyright Act and the Trade Marks Act provide that provisions for counterfeit trade mark and pirated copyright goods shall not apply to goods imported for private and domestic use. Goods exported from New Zealand. There are no controls on the export of counterfeit trade mark goods or pirated copyright goods from New Zealand. Copyright works in transit to a country other than New Zealand. The procedures do not apply to imports of goods put on to the market in another country by or with the consent of the right holder in that country (the importation of such goods into New Zealand is known as parallel importing). It should be noted, however, that a copyright owner may give Customs a notice in writing listing infringing copies which are to be imported and requesting that Customs inform the copyright owner if Customs becomes aware that any goods listed in the notice are to be imported into New Zealand or if such copies are in or at any time come into the control of Customs. A copyright owner is required to submit the notice in the prescribed manner and pay a fee.]

[Answer 16: The main elements of the procedures relating to the suspension of the release of goods by Customs are outlined below. Suspension of Release by Customs Authorities (Article 51) Customs can suspend the release into circulation of counterfeit trade mark or pirated copyright goods where the right holder has lodged a notice requiring Customs to detain any pirated or counterfeit copies of the items that are in or at any time come into the control of Customs. Application (Article 52) The notices referred to above require the right holder to specify ownership in the copyright work or a New Zealand registered trade mark. Regulations made under the Trade Marks Act 1953 and the Copyright Act 1994 require evidence in support of a claim of ownership: every person who gives a notice under section 54B of the Trade Marks Act 1953 and section 136 of the Copyright Act 1994 is required to furnish to Customs evidence in support of the claim that goods infringe the trade mark or copyright; and Customs may direct that such evidence be furnished at the time the notice is given or at any subsequent time. The information in the notices, and any additional evidence that Customs may require, ensures that Customs has sufficient information to identify infringing goods at the time of importation. The notices are valid for no longer than 5 years from the date of the notice. In the case of: Trade marks, if the registration of the trade mark to which the notice relates will expire within the period of 5 years from the date of the notice, the notice is valid for no longer than that period for which the current registration will last. Copyright, if the copyright in the work to which the notice relates will expire within the period of 5 years from the date of the notice, the notice is valid for no longer than the period for which the copyright will last. Security or Equivalent Assurance (Article 53) Regulations made under the Trade Marks Act 1953 and the Copyright Act 1994 provide for security and indemnity in respect to counterfeit trade mark or pirated copyright goods. Thus: Every person giving a notice under the Trade Marks Act 1953 and the Copyright Act 1994 in respect to counterfeit trade mark and pirated copyright goods is required to give a security or an indemnity or both a security and an indemnity to persons determined by Customs and in an amount, and on such terms and conditions, as may be determined by Customs. Customs may direct that a security or an indemnity or both a security and indemnity be given at the time the notice is given or at any subsequent time. Every person to whom an item is to be or has been released from detention under the legislation is required to give a security or an indemnity or both a security and an indemnity to persons determined by Customs and in an amount, and on such terms and conditions, as may be determined by Customs. Customs has determined that persons giving notices under the above legislation must provide Customs with: a security of $5,000 which is deposited in Customs trust account (this figure may be set at a higher or lower figure where it is considered necessary); and completed forms of indemnity. This ensures that Customs is protected against action taken under a notice and prevents abuse of the legislative provisions by right holders. Duration of Suspension (Article 55) Customs may only enforce the border enforcement provisions in respect to the Trade Marks Act and the Copyright Act where: a notice has been accepted by Customs; and the goods have been imported and are in the control of Customs. In such instances, Customs may conduct any investigation in order to establish whether or not the goods appear to infringe the right holders trade mark or copyright. In undertaking this investigation Customs may require the right holder or any person having an interest in the goods to supply such information as Customs may specify in order to determine if the goods infringe the right holders trade mark or copyright. This information must be supplied to Customs within ten working days. Customs is then required, within a reasonable period of time, to make a determination as to whether or not Customs considers that the goods appear to infringe a registered trade mark or copyright. A written notice of determination must then be served on the right holder and any other person having an interest in the goods, advising the outcome of Customs investigation. Goods which Customs determines are covered by a notice and infringe a copyright or trade mark, may be detained (not seized) for ten working days. If, within this detention period, Customs has not been advised that a person other than the importer or consignee has commenced proceedings in the Court to establish that the goods breach their rights, the goods are released to the importer. During this detention period any person having an interest in the goods, for example an importer, may apply to the Court for an order that: the notice be discharged; or the goods are to be released; or that the goods are not counterfeit or pirated and they are not covered by the notice. Customs will deal with the goods in accordance with the Court's decision. The ten working days detention period may, on application to Customs, be extended to 20 working days. In the case of counterfeit trade mark goods, the importer or consignee may, by notice in writing to Customs, consent to the goods being forfeit to the Crown. Indemnification of the Importer and the Owner of the Goods (Article 56) In instances where the Court decides that the goods do not bear an infringing sign or are not pirated, it may make an order that any person who is a party to the proceedings pay compensation to the importer, consignee or to the owner of the goods. Right of Inspection and Information (Article 57) Customs may allow any person having an interest in the goods which are under investigation by Customs or the subject of court proceedings to inspect the goods. They may, with the approval of Customs, take a sample of the goods for inspection.]

[Answer 17: The border enforcement provisions have only been in force since 1 January 1995. To date there has only been one case where the right holder has initiated action through the Court against the importation of infringing goods. As this case has not been completed Customs is unable to make any comment on the duration of proceedings and their cost. The response above to question 16 discusses the time for which decisions are valid in respect to the suspension of the release of goods.]

[Answer 18: In certain circumstances Customs may be able to take ex officio action under the Customs Import Prohibition (Trade Descriptions) Order 1991. This Order prohibits the importation of: "3. Any goods bearing, or to which there is attached in any manner whatsoever, any statement or indication, including a statement or indication by words, numbers, marks, pictures or symbols, or a combination therefore, which is incorrect or misleading as to a The particular kind or standard, quality, grade, quantity, composition, style, model, particular history, or particular previous use of the goods; or" "4. Any goods in respect of which there is applied to any covering, packaging, label, wrapper, ticket, reel or thing in or with which the goods are supplied, any statement or indication, including a statement or indication by words, numbers, marks, pictures or symbols, or a combination thereof, which is incorrect or misleading as to a The particular kind or standard, quality, grade, quantity, composition, style, model, particular history , or particular previous use of the goods; or" It has been suggested that the illegal use of a trade mark could be taken as an indication that the counterfeit product meets the standard or quality of the genuine product. In cases where it could be established that use of the trade mark infers a particular standard or quality, the goods may be covered by the above prohibition order. In such cases the goods may be liable for seizure under the Customs and Excise Act 1996. It should be noted that the use of the Order in this manner has not been tested in the courts.]

[Answer 19: Customs does not have any authority to order any remedies regarding the importation of counterfeit trade mark and pirated copyright goods. However, a court may order that goods be: forfeit to the claimant; or destroyed; or otherwise dealt with as the court thinks fit. In considering which of these remedies should be ordered, a court must have regard to: The availability of other remedies to adequately compensate the intellectual property rights owner. The need to ensure that the infringing items are not disposed of in a manner that would already adversely affect the claimant. The court may also: Order the items be sold and the proceeds divided where there is more than one person interested in an item. Order that compensation be paid to an importer, consignee or the owner of goods where a court decides there is not an infringement.]

Customs enforces a wide range of import prohibitions and restrictions on behalf of government departments and agencies which have the policy responsibilities for the controls. These import prohibitions and restrictions are related to the enforcement of: quarantine requirements; public safety requirements, for example, in respect to firearms, objectionable material, and explosives; consumer safety, for example, in respect to unsafe goods; and international obligations, for example, in respect to the Basel Convention. These import prohibitions and restrictions are not related to the enforcement of intellectual property rights. An application for suspension of release is only available in respect to goods which involve infringements of intellectual property rights involving counterfeit trade mark or pirated copyright goods as defined in the TRIPS Agreement. The following goods are excluded from the application of such procedures: De minimis imports and goods imported for private and domestic use. The Copyright Act and the Trade Marks Act provide that provisions for counterfeit trade mark and pirated copyright goods shall not apply to goods imported for private and domestic use. Goods exported from New Zealand. There are no controls on the export of counterfeit trade mark goods or pirated copyright goods from New Zealand. Copyright works in transit to a country other than New Zealand. The procedures do not apply to imports of goods put on to the market in another country by or with the consent of the right holder in that country (the importation of such goods into New Zealand is known as parallel importing). It should be noted, however, that a copyright owner may give Customs a notice in writing listing infringing copies which are to be imported and requesting that Customs inform the copyright owner if Customs becomes aware that any goods listed in the notice are to be imported into New Zealand or if such copies are in or at any time come into the control of Customs. A copyright owner is required to submit the notice in the prescribed manner and pay a fee.

The main elements of the procedures relating to the suspension of the release of goods by Customs are outlined below. Suspension of Release by Customs Authorities (Article 51) Customs can suspend the release into circulation of counterfeit trade mark or pirated copyright goods where the right holder has lodged a notice requiring Customs to detain any pirated or counterfeit copies of the items that are in or at any time come into the control of Customs. Application (Article 52) The notices referred to above require the right holder to specify ownership in the copyright work or a New Zealand registered trade mark. Regulations made under the Trade Marks Act 1953 and the Copyright Act 1994 require evidence in support of a claim of ownership: every person who gives a notice under section 54B of the Trade Marks Act 1953 and section 136 of the Copyright Act 1994 is required to furnish to Customs evidence in support of the claim that goods infringe the trade mark or copyright; and Customs may direct that such evidence be furnished at the time the notice is given or at any subsequent time. The information in the notices, and any additional evidence that Customs may require, ensures that Customs has sufficient information to identify infringing goods at the time of importation. The notices are valid for no longer than 5 years from the date of the notice. In the case of: Trade marks, if the registration of the trade mark to which the notice relates will expire within the period of 5 years from the date of the notice, the notice is valid for no longer than that period for which the current registration will last. Copyright, if the copyright in the work to which the notice relates will expire within the period of 5 years from the date of the notice, the notice is valid for no longer than the period for which the copyright will last. Security or Equivalent Assurance (Article 53) Regulations made under the Trade Marks Act 1953 and the Copyright Act 1994 provide for security and indemnity in respect to counterfeit trade mark or pirated copyright goods. Thus: Every person giving a notice under the Trade Marks Act 1953 and the Copyright Act 1994 in respect to counterfeit trade mark and pirated copyright goods is required to give a security or an indemnity or both a security and an indemnity to persons determined by Customs and in an amount, and on such terms and conditions, as may be determined by Customs. Customs may direct that a security or an indemnity or both a security and indemnity be given at the time the notice is given or at any subsequent time. Every person to whom an item is to be or has been released from detention under the legislation is required to give a security or an indemnity or both a security and an indemnity to persons determined by Customs and in an amount, and on such terms and conditions, as may be determined by Customs. Customs has determined that persons giving notices under the above legislation must provide Customs with: a security of $5,000 which is deposited in Customs trust account (this figure may be set at a higher or lower figure where it is considered necessary); and completed forms of indemnity. This ensures that Customs is protected against action taken under a notice and prevents abuse of the legislative provisions by right holders. Duration of Suspension (Article 55) Customs may only enforce the border enforcement provisions in respect to the Trade Marks Act and the Copyright Act where: a notice has been accepted by Customs; and the goods have been imported and are in the control of Customs. In such instances, Customs may conduct any investigation in order to establish whether or not the goods appear to infringe the right holders trade mark or copyright. In undertaking this investigation Customs may require the right holder or any person having an interest in the goods to supply such information as Customs may specify in order to determine if the goods infringe the right holders trade mark or copyright. This information must be supplied to Customs within ten working days. Customs is then required, within a reasonable period of time, to make a determination as to whether or not Customs considers that the goods appear to infringe a registered trade mark or copyright. A written notice of determination must then be served on the right holder and any other person having an interest in the goods, advising the outcome of Customs investigation. Goods which Customs determines are covered by a notice and infringe a copyright or trade mark, may be detained (not seized) for ten working days. If, within this detention period, Customs has not been advised that a person other than the importer or consignee has commenced proceedings in the Court to establish that the goods breach their rights, the goods are released to the importer. During this detention period any person having an interest in the goods, for example an importer, may apply to the Court for an order that: the notice be discharged; or the goods are to be released; or that the goods are not counterfeit or pirated and they are not covered by the notice. Customs will deal with the goods in accordance with the Court's decision. The ten working days detention period may, on application to Customs, be extended to 20 working days. In the case of counterfeit trade mark goods, the importer or consignee may, by notice in writing to Customs, consent to the goods being forfeit to the Crown. Indemnification of the Importer and the Owner of the Goods (Article 56) In instances where the Court decides that the goods do not bear an infringing sign or are not pirated, it may make an order that any person who is a party to the proceedings pay compensation to the importer, consignee or to the owner of the goods. Right of Inspection and Information (Article 57) Customs may allow any person having an interest in the goods which are under investigation by Customs or the subject of court proceedings to inspect the goods. They may, with the approval of Customs, take a sample of the goods for inspection.

The border enforcement provisions have only been in force since 1 January 1995. To date there has only been one case where the right holder has initiated action through the Court against the importation of infringing goods. As this case has not been completed Customs is unable to make any comment on the duration of proceedings and their cost. The response above to question 16 discusses the time for which decisions are valid in respect to the suspension of the release of goods.

In certain circumstances Customs may be able to take ex officio action under the Customs Import Prohibition (Trade Descriptions) Order 1991. This Order prohibits the importation of: "3. Any goods bearing, or to which there is attached in any manner whatsoever, any statement or indication, including a statement or indication by words, numbers, marks, pictures or symbols, or a combination therefore, which is incorrect or misleading as to a The particular kind or standard, quality, grade, quantity, composition, style, model, particular history, or particular previous use of the goods; or" "4. Any goods in respect of which there is applied to any covering, packaging, label, wrapper, ticket, reel or thing in or with which the goods are supplied, any statement or indication, including a statement or indication by words, numbers, marks, pictures or symbols, or a combination thereof, which is incorrect or misleading as to a The particular kind or standard, quality, grade, quantity, composition, style, model, particular history , or particular previous use of the goods; or" It has been suggested that the illegal use of a trade mark could be taken as an indication that the counterfeit product meets the standard or quality of the genuine product. In cases where it could be established that use of the trade mark infers a particular standard or quality, the goods may be covered by the above prohibition order. In such cases the goods may be liable for seizure under the Customs and Excise Act 1996. It should be noted that the use of the Order in this manner has not been tested in the courts.

Customs does not have any authority to order any remedies regarding the importation of counterfeit trade mark and pirated copyright goods. However, a court may order that goods be: forfeit to the claimant; or destroyed; or otherwise dealt with as the court thinks fit. In considering which of these remedies should be ordered, a court must have regard to: The availability of other remedies to adequately compensate the intellectual property rights owner. The need to ensure that the infringing items are not disposed of in a manner that would already adversely affect the claimant. The court may also: Order the items be sold and the proceeds divided where there is more than one person interested in an item. Order that compensation be paid to an importer, consignee or the owner of goods where a court decides there is not an infringement.

The courts with jurisdiction in respect to criminal acts concerning IPR infringements are the District Court, High Court and, in the case of certain appeals, the Court of Appeal. ( See the comments under question 1 for further detail).

[Answer 1: District Court: These are courts of first instance and have extensive civil and criminal jurisdictions. High Court: The High Court exercises jurisdiction in cases of major crimes, the more important civil claims, appeals from lower courts and tribunals, and reviews of administrative actions. Court of Appeal: The primary function of the Court of Appeal is to determine ordinary appeals from the High Court. Certain other proceedings in the lower courts may, by order of the High Court, be removed to the Court of Appeal. The Court also has some original jurisdiction. Judicial Committee of the Privy Council: This is the final appeal tribunal for New Zealand. Appeals to the Privy Council may be brought by leave of the Court of Appeal, or by special leave of the Privy Council itself. Leave is granted as of right from any final judgment of the Court of Appeal, where the matter in dispute amounts to the value of $5,000 or more, or involves directly or indirectly some claim to property, or some civil right exceeding that value. The Privy Council has a discretionary power to grant special leave to appeal in criminal cases. Such leave is not commonly granted in criminal appeals from New Zealand. It should be noted that a Bill has been introduced into the New Zealand Parliament which would abolish the right of appeal to the Privy Council.]

The IPR infringements for which criminal procedures and remedies are available are discussed below in the comments under question 24.

[Answer 24: The penalties and other remedies that may be imposed in respect to infringements of intellectual property rights are as follows: • imprisonment Up to three months imprisonment can be imposed for offences committed in respect to infringements of copyright works, including illicit recordings, and for the making or possession of an object which is known to be used for the making of an infringing copy of a copyright work. Where a body corporate commits an offence in respect to an object every director and every person concerned with the management of the body corporate will be guilty of an offence. • monetary fines In respect to copyright infringements, including illicit recordings, up to $50,000 in fines can be imposed for each offence. In respect to forged, falsely applied or falsely used trade marks, fines for an offence can range from a maximum of $30,000 in the case of an individual to $100,000 in the case of a body corporate. (These maximums also apply cumulatively to more than one offence committed at the same time). • seizure, forfeiture and destruction of infringing goods and materials and implements for their production In respect to both infringing copyright works and forged, falsely applied or falsely used trade marks, a court is able to order forfeiture, destruction of the goods or otherwise deal with the goods in the way a court sees fit. • other Other remedies available to a court include the granting of injunctions in both copyright and trade mark cases. In trade mark cases a court can also impose a range of other remedies, for example, the voiding or varying of a contract or arrangement, and the refunding of money or the return of goods. See also the comments under question 5 in relation to destruction or other disposal of infringing goods and materials/implements for their production.]

The following public authorities have primary responsibility for initiating criminal proceedings: The Commerce Commission in respect to forged, falsely applied or falsely used trade marks. The New Zealand Police in respect to copyright infringements. Both the Commerce Commission and the New Zealand Police can act on their own initiative and/or in response to complaints.

Private persons can initiate criminal proceedings although such action is rare. A party likely to take action is one with an interest in the issue where for some reason the authorities have decided not to take the case, for example, because they are not convinced the evidence is likely to result in a conviction.

The penalties and other remedies that may be imposed in respect to infringements of intellectual property rights are as follows: • imprisonment Up to three months imprisonment can be imposed for offences committed in respect to infringements of copyright works, including illicit recordings, and for the making or possession of an object which is known to be used for the making of an infringing copy of a copyright work. Where a body corporate commits an offence in respect to an object every director and every person concerned with the management of the body corporate will be guilty of an offence. • monetary fines In respect to copyright infringements, including illicit recordings, up to $50,000 in fines can be imposed for each offence. In respect to forged, falsely applied or falsely used trade marks, fines for an offence can range from a maximum of $30,000 in the case of an individual to $100,000 in the case of a body corporate. (These maximums also apply cumulatively to more than one offence committed at the same time). • seizure, forfeiture and destruction of infringing goods and materials and implements for their production In respect to both infringing copyright works and forged, falsely applied or falsely used trade marks, a court is able to order forfeiture, destruction of the goods or otherwise deal with the goods in the way a court sees fit. • other Other remedies available to a court include the granting of injunctions in both copyright and trade mark cases. In trade mark cases a court can also impose a range of other remedies, for example, the voiding or varying of a contract or arrangement, and the refunding of money or the return of goods. See also the comments under question 5 in relation to destruction or other disposal of infringing goods and materials/implements for their production.

See the comments above under question 8.

[Answer 8: The length and cost of proceedings will vary with each case. Factors which can influence length and cost are the number of parties involved, the complexity of the proceedings and the geographical location of the proceedings. No specific data is available on actual duration of proceedings and costs. It should be noted that an application for an ex parte application can be heard and granted very quickly.]