New Zealand intellectual property legislation

By Susy Frankel

Two of New Zealand’s unique intellectual property law features relate to Māori and the protection of mātauranga Māori (Māori knowledge).

What is intellectual property law?

Intellectual property law is an umbrella term given to the large and detailed area of law that regulates aspects of human creativity and innovation. There are three main areas of intellectual property law: copyright, patents and trademarks. Each of these areas has related rights, which are also part of intellectual property law.

All intellectual property laws are predominantly territorial. Broadly, that means that a registered right (such as a patent or trade mark) is only good in the country or territory where it is registered. Copyright is not registered but it too is territorial and the rules differ between countries.

The international agreements on intellectual property require some commonalities between countries’ laws (called minimum standards) but those agreements also allow for some differences between countries’ laws.

Where it came from

New Zealand’s intellectual property law was adopted from British law. The colony’s first copyright law was one of the earliest European laws of the land. The 13th Ordinance of New Zealand (1842) was made to protect as copyright “A grammar of the New Zealand language”, a book compiled by the Reverend Robert Maunsell.

The first patent in New Zealand (issued in 1861) related to harakeke (New Zealand flax). The patent was granted for an invention for the preparation of Phormium tenax (flax) fibre and other plant fibres for manufacturing purposes.

Protecting health; protecting profit

In 19th-century New Zealand the phrase ‘patent medicine’ was a standard way of describing the potions that claimed to cure every known ill. Rival producers battled for possession of successful names or recipes.

Patents and trademarks

Patents

Patents protect scientific and technological inventions. This includes both products and processes, for example, pharmaceutical compounds as well as the ways those compounds are made. Plant-variety rights are an example of rights related to patents.

Not all inventions qualify to be patented. To be patentable an invention must:

  • be novel (not known)
  • involve something called an inventive step, which means that the invention is not obvious to an expert
  • be useful.

Patents are sometimes highly technical because those who create the inventions are scientific specialists. Patented inventions are, however, found in everyday life and include many mechanical things and simple objects, such as engine parts, pens and hairbrushes.

Trademarks

Trademarks protect the names and images that consumers associate with products and businesses. The reason that the law does this is to enable consumers to tell one product from another.

Related to trademarks are geographical indication rights. These are the names of towns, countries or areas that are applied to certain products, and often indicate quality, reputation or production methods.

Some economists say that trademarks also help consumers distinguish quality products from those of lesser quality. In addition, trademarks protect one trader from unfair competition from another trader. For example, the phrase ‘Lemon and Paeroa’ cannot be used on drinks that do not come from the company that makes the Lemon and Paeroa drink.

Smell, sound, shape and colour

From 2003, smells, shapes, sounds and colours were able to be trademarked. The New Zealand Rugby Football Union grabbed the colour black; Mr Whippy went for a bit of ‘Greensleeves’ and entrepreneur Rob Miller fought for and won the right to trademark the swan-neck shape of his Klipon kiwifruit vine tie. He said, ‘I’m the first person [in New Zealand] to have got a trademark for a shape, and it cost a small fortune.’

Use of trademarks

In the modern world trademarks are everywhere. They are used in language – for example, New Zealanders sometimes refer to shoe polish as ‘nugget’, which is, in fact, a brand name. Because trademarks are so widely used, trademark law has to be careful about not restricting free speech.

Trademark law protects traders from others using their trademarks on competing products, but it does not prevent fair comment on products. Trademarked products are allowed to be criticised. That is, it can be pointed out they don’t work or they represent bad ideas (as long as those discussions are not defamatory or deceptive).

Copyright

In New Zealand copyright is governed by the Copyright Act 1994. It protects creative works such as books, films, music, artworks and plays. It also protects works that may be seen as less cultural, including computer programs and industrial designs. Performers’ rights – a set of rights included in the act – give performers a limited right to control the recording and transmission of their performances.

Māori intellectual property

In the 2000s two of New Zealand’s unique intellectual property law features relate to Māori and the protection of mātauranga Māori (Māori knowledge).

The Trade Marks Act 2002 and the Patents Act 2013 each require a Māori advisory committee. These committees can let the Commissioner of Patents, Trade Marks and Designs know if Māori interests are affected by a trademark or patent application.

The trademark committee has the power to recommend that a trademark should not be registered. The committee also provides guidelines about the use of well-known Māori symbols such as koru and the word ‘kiwi’. The patent committee was new in the early 2000s.

The committees are unique in the world. In 2011 the Waitangi Tribunal in the Wai 262 claim recommended that the committees be given decision-making powers.

About the author

Susy Frankel
Susy is the Director of the New Zealand Centre of International Economic Law, Chair of the Copyright Tribunal (NZ) and Professor of Law at Victoria University of Wellington. Before joining Victoria University, in 1997, Susy practiced law in New Zealand and London. She qualified as Barrister and Solicitor of the High Court of New Zealand in 1988 and as a Solicitor of England & Wales in 1991. Suzy has published books, articles and book chapters and is frequently invited to give conference presentations on various aspects of intellectual property law and policy. She may be contacted at susy.frankel[at]vuw.ac.nz.