New Zealand: Strategies For Protecting Intellectual Property

Last Updated: 23 October 2008


Any company not having a proper understanding of intellectual property and how to manage it will most likely make expensive errors or miss lucrative opportunities.

It is not sufficient to address intellectual property issues in an ad hoc manner. Intellectual property is the only source of sustainable competitive advantage and must be treated as such. Smart companies will treat intellectual property as a strategic issue requiring proactive management for performance optimisation.

The process of intellectual property management involves four steps: identification and capture of IP rights, protecting IP rights, and exploiting those rights. This article examines strategies for protecting IP rights.

Patent filing strategies

The first and most fundamental question is whether a particular innovation should be protected by a patent, retained as a trade secret or simply used and published to ensure no one else can patent it. The decision process will involve an assessment of each option against the company's business strategies. An innovation may not be in the core field of business for the company, yet there may be value in patenting it for the purpose of licensing it to another entity. A formula or recipe might be something that can be kept secret for a longer period than the 20 year patent term and accordingly a decision is made to retain it as a trade secret, rather than disclose it to the world in a patent.

Once the decision to patent is made, a filing strategy must be developed.

In a number of countries it is possible to file a provisional patent specification, which is essentially a description of the state of the art including disadvantages associated with it, statements of invention describing the innovation, and a discussion of the advantages of the invention.

From the filing date of the provisional specification, the applicant has 12 months (extendible to 15 months) within which to complete the application by filing a complete specification. A complete specification includes a set of claims that define the scope of the monopoly afforded by the patent. Within those 12 months the applicant must also decide whether to file applications in foreign countries.

It is possible to file a Patent Cooperation Treaty (PCT) application within 12 months from the filing date of the home application ("the priority date"). A PCT application is a single application that permits the applicant to nominate almost every significant country in the world. The PCT application provides a 30 or 31 month period (depending on the country) from the priority date of the home application before it is necessary to complete the application. However, it is necessary to complete the application in each separate country in which patent protection is desired.

The 12 and 30/31 month periods discussed above are extremely useful from a patentee's perspective:

  • it delays the cost of drafting and filing complete patent specifications, which is good cash flow management;
  • it provides a period during which the invention can be tested and used, thereby determining whether it is technologically viable;
  • it provides the applicant with the opportunity to gauge commercial interest in the invention; and
  • it gives the applicant time to ascertain the primary markets of interest.

As the costs of patenting an invention depend to a significant extent on the countries for which protection is sought, selecting those countries is an important decision. The following filing strategy may be a useful starting point:

  • protect your home market, to ensure you can actually make the product there;
  • protect the major economic markets for the product or process, to increase the chances of the invention delivering the desired level of return; and
  • protect the markets in which your main competitors have manufacturing bases. For example, while Sweden is not a major market for rock crushing machinery, it is a major player in the manufacture of such machinery. Having a rock crushing patent in Sweden may make it difficult for Swedish manufacturers to compete.

Ring fencing technology is another strategy to consider. Ring fencing involves patenting not only the core technology, but also every improvement or piece of technology around the core technology. This strategy makes it very difficult for competitors to design around the invention, and should ensure some areas of competitive advantage remain in the event a competitor successfully attacks the core patent.

Trade mark selection and filing strategies

The primary driver in selection of an appropriate trade mark should be the target market and the differentiating characteristics of the product or service in question. However, given the enormous investment that will be made in the trade mark over time, it is highly advantageous to select a strong and distinctive trade mark that will be eligible for trade mark registration, and that will be readily enforceable.

For a trade mark to be registrable, it must not be directly descriptive or laudatory of the goods or services to which it relates. In assessing whether a trade mark is registrable for the goods and services in question, reference is made to whether the mark is distinctive for those goods/services. The higher the level of distinctiveness, the easier it will be to register the mark. For example, invented words such as COKE, PEPSI or ZESPRI form the most distinctive marks. Ordinary words making no reference to any characteristic of the goods or services to which they relate are also high on the list of distinctive marks: for example BELL for tea, or TIGER for ointments.

From a marketing perspective, it can be desirable to have some element of descriptiveness in the mark. The mere fact the mark may allude to the nature or purpose of the goods or services will not necessarily disqualify it from registration. For example, UPPERCUT alludes to potato chips without being directly descriptive. Having said that, the more descriptive the mark, the harder (and more expensive) it will be to register. A balance needs to be struck between marketing and registrability considerations when settling on an appropriate mark for the goods or services in question.

Not only will a descriptive mark be difficult to register, it will prove difficult and expensive to successfully enforce. The rationale behind prohibiting the registration of descriptive marks is that other businesses in the same field should be permitted to use ordinary descriptive words to describe their products in the ordinary course of trade. If one business is permitted to register such descriptive words, it could unfairly prevent others from using them.

The more descriptive the registered trade mark is, the closer a potential infringer can legitimately get without actually infringing the registration. For example ACTIFAST and ACTIFED, both in relation to pharmaceuticals, were not considered sufficiently similar, because although they shared the ACTI element, that element was in common use in the pharmaceutical trade. Likewise, RAIN KING and RAIN MASTER in relation to water spraying equipment were not sufficiently similar even though they shared the (descriptive) word "rain" and the words "king" and "master" were similar conceptually.

Assuming a trade mark has been selected and perhaps developed into a stylised logo, a filing strategy must be determined. There are essentially four parts to any trade mark filing strategy, namely determining:

  • exactly what mark(s) will be registered;
  • the goods and services for which registration will be sought;
  • countries in which registration will be sought; and
  • the timing of any filings.

The primary determination in any successful trade mark filing strategy is to precisely identify the appropriate trade mark(s) to protect.

Generally, the trade mark will be a word or a group of words used in relation to a particular set of goods, or range of services, or both. However, as the trade mark in question may be used in many forms (for example in the form of a logo, in colour, with various pictorial elements, etc), careful thought must be given as to which form of the trade mark should be registered. Product lifecycle, changing consumer trends and costs are some of the factors which need to be considered when determining a filing strategy.

In the case of a word mark, the broadest protection will be achieved by registering the mark in capitals, in plain font and without any stylisation. A registration for a word mark in this format will provide protection for both uppercase and lowercase versions of the mark, and stylised and unstylised versions.

In the case of a logo mark, consideration needs to be given to whether the best protection will result from registering the logo as a whole, or whether it would be better to register the individual elements which make up the logo (for example, word(s), images, etc). If, for example, the logo contains a stylised word element together with certain pictorial device elements, and both elements are registrable in their own right, then the broadest protection will be obtained by registering the word in plain script and the pictorial device elements separately. A registration for each of the elements will, in combination, provide protection for the logo as a whole. For example, the Coca-Cola Company has registered the word COKE in plain script and in its distinctive stylised script, the sash device on its own and the shape of its waisted bottle (among other things).

For colour marks (that is, a logo or stylised word mark shown in colour), it is also worthwhile considering whether it is absolutely necessary to register the mark in colour. The rights in a trade mark registered in colour will be limited by the colours which make up the mark. If an alleged infringing mark utilises quite different colours, then that is a factor the court will consider in determining whether the mark is confusingly similar to the registered mark. A mark registered in black and white is not limited to colour, and therefore offers broader protection. Wherever possible, the mark should be registered in black and white, although certain circumstances may warrant applying to register the mark in colour (for example, where the mark would not be considered eligible for registration if the mark was shown in black and white).

Under New Zealand practice (as in a number of other countries), the applicant may elect to include more than one version of his/her mark in the application for registration. This is called a "series" application. In order to do this, the marks must not differ from one another in any material way. If there are material differences between the marks (and this is something which will need to be decided on a case-by-case basis), then the marks will not constitute a valid series.

Generally, the series provisions are most often used for filing colour and black and white versions of a mark in the same application. However, the ability to file series applications is extremely useful where an applicant wishes to protect a number of variants of a mark, which differ from one another in immaterial ways.

Where the packaging of a particular product, or the product itself, has a distinctive shape, it may be possible to obtain a registration for the shape as a three-dimensional trade mark. However, for the shape of the goods to be registrable, the shape must function as a trade mark. That is, the shape must be able to indicate that the goods in question originate from a particular source. Most shape marks will not meet this test without first being used in the public domain for some time, and as a result the public have learnt to associate the shape in question with a particular trader. Also, where the shape results from the nature of the goods themselves, the shape is unlikely to have distinctive character, as the public are unlikely to see the shape as indicating that the goods come from one source only. For example, Nestle were unsuccessful in trying to register the shape of its KIT KAT bar in New Zealand because it was a shape not dissimilar to many other bars that had been marketed for some time.

Trade mark applications are filed covering goods and services. These are classified in 45 classes, and each class represents a particular category of goods or services. For example foodstuffs fall primarily within classes 29 to 31, dietary supplements are found in class 5 and beverages fall in classes 32 and 33 (depending on whether they are alcoholic or non-alcoholic). The main purpose of the class system is to facilitate easy searching of the trade mark register.

New Zealand, like a number of other countries, allows the filing of "multi-class" trade mark applications. That is, applications which cover more than one class of goods and/or services. Therefore, if there are, say, three classes of interest, then rather than file a separate application for each class, a single application can be filed covering all three classes.

Any trade mark application should list all of the goods and/or services of interest under the mark. If details are available, the application should also cover any goods and/or services in relation to which the mark is likely to be used in future. The list of goods/services should be as accurate and as complete as possible, as it is not possible to broaden the list of the goods/services once the application has been filed. However, a pragmatic approach should be taken when choosing the goods/services to be covered, particularly as the number of classes claimed will have an impact on the cost of filing and processing the application. Therefore, identification of the goods and services in question, which in turn will determine the number of classes required, should go hand in hand with your overall branding strategy.

Like patent protection, trade mark protection is territorial. Therefore, in general, a trade mark application will need to be filed in each country/territory of interest, although there are a few exceptions to this rule. For example, it is possible to file a Community Trade Mark ("CTM") application, which will protect a mark in all EU-member countries via a single application.

There is also an international agreement known as the Madrid Protocol, which allows an applicant to file a single "international" application designating (subject to certain conditions) a number of countries in which protection for the mark is sought. The details of the international application are then transmitted to the national trade mark offices of each designated country, and each application is then examined according to each country's trade mark laws. New Zealand has not ratified the Madrid Protocol, and as such the international application is not available to New Zealand businesses. Australia is a member of the Madrid Protocol, and accordingly a New Zealand company should consider whether it would be more economical for its Australian subsidiary or parent company to seek international trade mark protection for the New Zealand company's marks.

In determining the relevant countries or regions in which trade mark registration should be sought, a number of considerations need to be taken into account. Like all registered intellectual property, the important economic markets for the product or service should be considered. However, as a trade mark registration can be invalidated if the subject mark is not used in the particular country for a continuous period (usually three years), consideration must also be given to when the mark will be used in each country of interest.

This last consideration ties in with the final element of a trade mark filing strategy, namely the timing of any filing. After an application is filed in New Zealand, by virtue of an international convention, the applicant will have a six month period during which it can file foreign trade mark applications and claim the New Zealand filing date as the priority date for the foreign applications. Immediately before this convention period expires, the applicant should ideally conduct a search of the primary economic markets of interest (in which it has yet to file applications) to determine whether any potentially infringing trade marks have been adopted and used in those markets in the period since filing the New Zealand application. This search will highlight any pressing need to take advantage of the early convention priority date, and applications can be filed in the appropriate countries before the convention deadline.

Design filing strategies

Due to the strength of copyright protection for industrial articles in New Zealand, some companies question the need for registered design protection. Registered designs have two primary advantages over copyright protection for industrial articles.

Firstly, a registered design will stop someone from independently creating the same design. For example, adopting a "clean room" design process will avoid copyright in a product. This is essentially contracting an independent designer, giving them design instructions regarding the function and characteristics required from the design, but refraining from giving them any pictures of the copyright design or any description relating to it, and instructing the designer to strictly refrain from viewing any existing designs in the process. Utilising this process, the "causal connection" between the new design and the copyright work is removed. Unlike copyright infringement, a causal connection is not a necessary element in an action for infringement of a registered design, and therefore using a clean room design process will not save an infringer.

Secondly, copyright cannot be used to prevent parallel imports. Parallel imports are essentially legitimate product (not counterfeits) purchased from a legitimate trade channel overseas and imported into New Zealand. A New Zealand registered design can (in some circumstances) be infringed if the owner of that design is a different entity from the entity that applied the design to the product in the overseas country.

If a major market of interest is the European Community, it is possible to cover the entire community with a single design registration. Further, the Community Design regime provides a grace period of up to one year for public disclosures by the design owner. Accordingly, a design will be considered to have the requisite novelty for up to one year after it is first used or published in Europe by the owner of the design.

If the design of a company's product is very important strategically, but design protection was not sought before making the design public, the company should consider filing a trade mark application for the three dimensional shape of the product.

Border protection strategies

The Trade Marks Act 2002 and the Copyright Act 1994 both provide a mechanism for a rights holder (that is, the owner of copyright or a registered trade mark) to lodge a notice with the New Zealand Customs Service, which authorises Customs to seize and detain goods which infringe the copyright or trade mark registration the subject of the notice. It is important to note that the notices cannot be used to prevent parallel imports.

The rights holder must lodge a notice with Customs, together with a security bond (presently $5000) and an indemnity in favour of Customs. Once Customs has accepted the notice, security and indemnity, it will begin its surveillance of goods entering New Zealand on the basis of the import documents (bills of lading) accompanying those goods.

If Customs believes certain goods may be counterfeit (or otherwise infringe the rights the subject of the notice), Customs may contact the rights holder to obtain an opinion as to whether the goods are infringing goods.

Once Customs has all the information it requires, it will make a determination as to whether the goods are infringing goods, and if so, will seize and detain the goods. The rights holder then has ten days to initiate proceedings against the importer (and serve a notice of proceeding on Customs). If proceedings are not initiated within ten days Customs will release the goods to the importer.

In practice, the rights holder will usually negotiate with the importer for the infringing goods to be forfeited to Customs for destruction.

It should be noted that the security bond of $5000 can be used to cover a number of different notices for the same rights holder.

It is a good tactic in respect of logo trade marks to lodge a copyright notice in respect of the copyright in the logo (in addition to or instead of a trade mark notice relating to the logo), because the copyright notice will stop all goods featuring the logo, whereas the trade mark notice will only stop those goods that are the same as or similar to goods set out in the relevant trade mark registration.

A New Zealand distributor can potentially prevent parallel imported products that feature a trade mark registered in New Zealand, if the New Zealand registration is owned by the New Zealand distributor and an unrelated entity (the manufacturer) is the owner of the mark in the foreign country from which the goods originated.

Litigation strategies

The subject of strategies and tactics in litigation is topic in its own right. For the purposes of this paper, we will look at only one overarching strategy, which we have found works well for certain clients.

The strategy is to aggressively defend your intellectual property rights at every opportunity. Clients that adopt this strategy will quickly get a reputation for being litigious, and as a result will deter potential infringers from "having a go". The fact that a certain company aggressively defends its intellectual property gets known in New Zealand's relatively small intellectual property law circles. As a result, the company's intellectual property is often given a wider berth by intellectual property attorneys or lawyers advising on search results and letters of demand are also taken more seriously.


Intellectual property is an extremely important and valuable business asset. To ensure the asset generates an appropriate return on investment to your company, an intellectual property management programme should be implemented.

The programme should include criteria to determine if and when intellectual property should be the subject of registered protection. The criteria must relate back to the business strategies of the organization, to ensure intellectual property protection decisions support the strategic objectives of the company.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.