Four interesting changes CPTPP made to NZ Intellectual Property law

The Comprehensive and Progressive Trans-Pacific Partnership (CPTPP) came into force on 30 December 2018.  New Zealand law is now aligned with a number of multi-lateral IP agreements, particularly relating to copyright and associated rights.

Although not all changes are in force yet, here are our pick of the most interesting changes to Intellectual Property (IP) laws that are now active, and may affect our clients:

  1. Patents “grace period”

To be eligible for patent protection (which gives a valuable 20 year monopoly for a product, process, or improvement), your invention has to be “novel” on the date we file your patent application.

CPTPP has now introduced a “grace period”.  If you have disclosed, commercially used, or sold your invention before contacting us, under the new rules, as long as we file within 12 months of disclosure, you can still obtain valid patent protection in New Zealand (and some overseas countries).

However, since many overseas jurisdictions (such as Europe) do not recognise a grace period, if you are interested in protecting your invention overseas, the best course of action is still to file before any use or disclosure.

There are still advantages to filing first.  However, this change will be useful to clients who are primarily interested in the New Zealand market, where the grace period will make it commercially easier to use patent protection to lock your competitors out of the market.

  1. Additional damages for trade mark infringement

When someone copies your registered trade mark, CPTPP now gives the Courts the ability to award “additional damages”, taking into account the flagrancy of the infringement.  The Courts are expected to adopt the existing case law developed in relation to flagrant infringement of copyright.

Anyone receiving a “cease and desist” letter should beware this potential new penalty.

Please note additional damages are only available if you have protected your position by registering your trade mark – if you are relying on common law rights based on a reputation acquired through use, the common law remedies apply.

  1. Performers’ rights

Whenever someone performs a dramatic or musical work, or reads or recites a written work, they have performers’ rights.  This includes rights in respect of sound recordings or films made of their performance.

Performers now also have moral rights, such as the right to be identified, and the right to prevent derogatory treatment of their performance.  They also have enhanced rights to prohibit reproduction and use of sound recordings.

There remain a number of exceptions, and some CPTPP amendments (such as a longer term for performers’ rights) have not yet come into force.

  1. Enhanced Border Protection for Customs

NZ Customs is given additional powers to stop imports of pirated goods at the border.  New Zealand allows parallel imports of genuine products from overseas, but counterfeits may infringe rights including trade marks and copyright.

Rights holders have always been able to register a Notice of their rights with Customs, asking them to detain any counterfeit product at the border.  This was the strategy successfully used by Sanitarium to stop British “Weetabix”.

The CPTPP now gives Customs the power to seize any counterfeits they find, even if there is no Notice registered.  Rights holders will then have three days to start legal action to maintain the seizure.

It will not be possible for Customs to catch every infringement.  Rights holders can put themselves in a stronger position by registering a Notice of their rights with Customs, and will also have a longer ten working day window in which to start proceedings (or reach agreement).

Take Home Points

The changes introduced by CPTPP strengthen the position of rights holders, and producers of IP.  Many innovative New Zealand companies will benefit from changes including:

  • More flexibility in patenting strategy
  • Greater penalties against trade mark infringers (expected to lead to higher settlement rates)
  • Enhanced rights for performers
  • Counterfeits may be stopped by Customs more often at the border

This article contains general information only, and is not intended to be a comprehensive review of the changes introduced by the CPTPP, or how they may affect your business.  For specific advice tailored to your individual needs, please contact Virginia Nichols.