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.]