Intellectual Property

Intellectual property (IP) is an umbrella term used for human innovations and creativity that are capable of being protected under national law and international treaties. IP includes a diverse range of commercial assets from patents for new inventions through to copyright protected artworks.

The following fall under the umbrella of IP:

  • Trade Marks
  • Patents
  • Designs
  • Plant Variety Rights

In this section, we deal with the issue of "passing off" (someone attempting to gain a 'springboard effect' by capitalising on your own company's good name), and provide a little information on trade marks. Most likely, if you are just forming your company, you will want to trade mark your company name, to assist with preventing others from "passing off" their product as yours.

Passing off is conduct that unsuccessful designers and businesses engage ! Put simply, it is the attempt to pass one's goods off as another's (or, in the case of famous personalities, the attempt to pass them off as endorsing your product, when they have not). Like a cheap imitator of Tiffany's jewellery attempting to dupe consumers into purchasing their products on-line.

The necessary elements of the action for passing off have been restated as being:

  • that the plaintiff's goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;
  • that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and
  • that the plaintiff has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.

The restatement of the elements of passing off in this form has been preferred as providing greater assistance in analysis and decision than the formulation of the elements of the action previously expressed. This statement should not, however, be treated as akin to a statutory definition or as if the words constitute an exhaustive, literal definition of "passing off", and in particular should not be used to exclude from the ambit of the tort recognised forms of the action for passing off.

Unlike trade mark infringement, which posits any normal and fair use of the registered trade mark against the actual use made by the alleged infringer, passing off compares the actual ambit of the relevant goodwill of the plaintiff against the actual use made by the defendant.

In New Zealand, an action for passing off is almost always accompanied by an action for the breach of the Fair Trading Act 1986 (FTA), which prohibits certain misleading or deceptive conduct and false representations in trade.

While the FTA is consumer protection legislation, rival traders can bring action under the FTA. Unlike passing off, there is technically no requirement that the plaintiff suffer damage in order to be successful in an action for breach of the FTA.

A further difference from passing off is that an account of profits is not available as a remedy for breach of the FTA.

Remedies for passing off

A wide variety of remedies is available to a successful plaintiff in passing off. These include a declaration that the defendant acted wrongly, n injunction restraining further commission of the conduct in question, a freezing order (formerly known as a Mareva injunction), a search order (formerly known as an Anton Piller order), damages, or an account of profits. The successful plaintiff will also normally be entitled to costs.

If you believe that a competitor is attempting to capitalise on your business's good will, contact Rennie Cox immediately for advice.

Trade marks are symbols (like logos and brand names) that distinguish goods and services in the marketplace. Once a trade mark is registered, the ® symbol may be used with the trade mark.

Trade marks can include words, logos, colours, shapes, sounds, smells or any combination of these. A trade mark can become an extremely valuable business asset.

If your trade mark is not registered and another person uses it, you may have to take passing off action under the common law to stop the infringement. You will have to prove that you have developed a reputation in the trade mark and that use of the other trade mark would be likely to confuse or deceive the public. This can be difficult and expensive. If the trade mark is registered, a letter from us may be all that is needed to deter the infringer.