Key IP issues affecting licensing agreements in New Zealand
Is your jurisdiction party to the Paris Convention for the Protection of Industrial Property? The Patent Cooperation Treaty (PCT)? The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)? New Zealand signed the Paris Convention for the Protection of Industrial Property (1883) on 29 July 1931, which was revised in Brussels (1900), Washington (1911), The Hague (1925), London (1934), Lisbon (1958), and Stockholm (1967), amended in 1979 (Paris Union).
The London Act of the Convention, to which New Zealand became a party on July 14, 1946, was the most recent act to which New Zealand became a party. Articles 13 to 30 of the Paris Convention Stockholm Act of June 20, 1984 are also included. New Zealand joined the Patent Cooperation Treaty of 1970 on December 1, 1992. In addition, on 1 January 1994, New Zealand became party to the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994. New Zealand has been a member of these conventions and treaties since the early days of their promulgation and tends to support intellectual property rights (IPRs) worldwide.
Is it possible to ban a licensee from contesting the validity of a foreign licensor’s intellectual property rights or registrations in your jurisdiction by contract? There appears to be no law prohibiting a licensee from questioning the legality of a foreign licensor’s IPRs or registrations, hence such a clause should be included in any agreement.
If a trademark or patent (or any other IPR that can be registered, such as a registered design) reaches the end of its registration period or is found invalid, the legal impact is to remove the IPR’s protection, which could lead to misuse by a licensee. However, if a rogue licensee tries to take advantage of the position, the tort of passing off would help the licensor, but a licensee who is not bound by a legally enforceable licensing agreement would be free to compete.
Is an original registration or evidence of usage in the jurisdiction of origin, as well as any other requirements specific to foreigners, required before the intellectual property can be registered in your jurisdiction? Although no such registration or evidence of usage is required, any intellectual property registration would be greatly accelerated if the intellectual property was registered in another country. Any new registration in New Zealand must proceed through the Wellington-based Intellectual Property Office. For objections and legal requirements, there is usually a time lag.
Unregistered rights: There is no statute that prevents an unregistered trademark from being licensed as a matter of contract. Trademarks, on the other hand, should always be registered in order to provide the owner with complete protection. The common law of passing off or a claim under the Fair Trading Act 1986 are the two main bases for claiming a right in an unregistered trademark.
Security interests: The relevant law or statute in New Zealand must be followed when determining the validity of an intellectual property license. The subject of the requested protection must not be illegal or offensive, and legal processes must be followed. Whether or not a third party can object to an intellectual property license depends on the circumstances of the case and whether or not the third party has any legal rights to object. The Personal Property Securities Act 1999 (PPSA) permits the registration of a security interest in ‘personal property,’ which is defined in the PPSA to include intangibles. Intellectual property, such as trademarks, patents, designs, and copyright, is an example of intangible property.
Proceedings against third parties
Is it possible for a foreign owner or licensor of intellectual property to bring infringement proceedings against a third party in your jurisdiction without joining the licensee from your jurisdiction as a party to the proceedings? Is it possible for an intellectual property licensee in your jurisdiction to bring legal action against a licensed intellectual property infringer without the permission of the owner or licensor? Is it possible to put a contractual restriction on the licensee’s ability to do so?
Although it would be normal for a foreign owner or licensor of intellectual property to consult with the New Zealand licensee, who may be very helpful in providing information for the attack on the infringing third party, a foreign owner or licensor of intellectual property may institute proceedings in this manner without joining the licensee. It would depend on the particular language of a section in the applicable agreement in connection to proceedings against an infringer of licensed intellectual property without the consent of the owner or licensor. However, in most cases, an agreement should prohibit a local licensee from attacking an infringer without the owner’s or licensor’s authorization.
In your jurisdiction, can a trademark or service mark licensee sub-license the use of the mark to a third party? Is there a statutory right to sub-license, or does it have to be provided contractually? Can a licensee legitimately waive its right to sub-license if it exists by statute? Only if the agreement allowed it, may a trademark or service mark licensee sublicense the use of the mark to a third party. It would be exceptional, in our judgment, and any power to sublicense should be excluded from such an agreement.
Is each co-owner of intellectual property in your jurisdiction free to deal with that intellectual property as they see fit without the approval of the other co-owners? Is it possible for co-owners of intellectual property rights to change tthis position in a contract? Although it appears that you could engage into an agreement with other joint owners of an intellectual property right, the answer depends on the type of intellectual property right. The Patents Act 2013, the Trade Marks Act 2002, and the Copyright Act 1994 all apply in New Zealand, and various provisions of those Acts have an impact on the types of intellectual property rights.
First to file
In New Zealand, a patent application is awarded to the ‘first to file.’ New Zealand and Australia have an agreement that if a company files a trademark application in one jurisdiction on a certain date and then files the same trademark application in the other, the date of filing in the second jurisdiction will be backdated to the first jurisdiction’s original filing date. A foreign licensor may grant a license to utilize an invention that is the subject of a patent application but has not yet been granted in New Zealand.
Is it possible to patent software, business processes or methods, or living beings in your jurisdiction? The Patents Act of 2013 establishes an office and a location for communications to and from the public on matters arising under the Act, as well as the power to appoint a Maori Advisory Committee, the appointment of the Commissioner and Assistant Commissioners of Patents, and the power to make regulations.
A number of exclusions are included in the Act and they include: an invention is not patentable if the commercial exploitation of the invention is contrary to public policy or morality; computer programs; plant varieties; human beings and biological processes for their generation; inventions of methods of treatment of human beings by surgery or therapy; and inventions of methods of diagnosis practised on human beings. A harsher scrutiny of patent applications, stiffer deadlines, subject matter exclusions, more challenge possibilities, and annual renewal fees are among the most notable improvements.
Trade secrets and know-how: Although there is no specific legislation governing trade secrets or know-how, common law principles apply and provide protection. There are laws that cover the theft of confidential information, such as know-how, business data, trade secrets, and product and process inventions.
It is a matter of contract in New Zealand law for a licensor to restrict the licensee’s or third parties’ disclosure or use of trade secrets and know-how. There are no limits during the term or after the term or termination of a license agreement, save in the area of restraint of competition or restraint of commerce. Section 83 of the Contract and Commercial Law Act 2017 states that if competition restraints are too broad and simply too harsh, they will be determined to be against public policy and declared illegal. There is no distinction to be made between improvements to which the licensee may have contributed and those to which the licensee may not have contributed.
Copyright: New Zealand’s copyright legislation is codified in the Copyright Act 1994. Although it is possible to register copyright works globally as a signatory to the Berne Convention for the Protection of Literary and Artistic Works 1886, there is no copyright registration mechanism in place. In essence, copyright is inherent, but it is the tangible proof of talent, labor, and judgment that has resulted in the copyright work that is protected by copyright.
***Other Articles***
– You could see the Procedure of Trademark in New Zealand here.
– You could also see the Required documents of filing trademark in New Zealand here.
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