RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q4/NZL/1
5 August 1998
(98-3083)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON ENFORCEMENT
NEW ZEALAND1
The present document reproduces the introductory statement made by the delegation of
New Zealand, the questions put to it and the responses given in the review of legislation on
enforcement at the Council's meeting of 17-21 November 1997.2
_______________
1. INTRODUCTORY STATEMENT
New Zealand has implemented Part III of the TRIPS Agreement on enforcement through a
combination of existing systems, in the case of judicial procedures and remedies, and new processes,
in the case of border enforcement.
Judicial procedures and remedies
New Zealand has a well developed and comprehensive legal system combining the English
common law system with legislation.  The court structure, powers of the courts and the remedies
available to the courts ensure that both civil and criminal cases are considered in a fair and
expeditious manner.  This includes intellectual property rights cases.
In the case of civil actions, a range of remedies are available to the courts to ensure that the
rights of intellectual property rights owners are appropriately  protected.  Some of these remedies are
specifically provided for in intellectual property rights legislation such as the Copyright Act 1994.
Border enforcement
Border enforcement measures concerning infringing trademarks and pirated copyright goods
are provided for in new legislation which came into force on 1 January 1995.  This legislation results
from:
- the addition of a new part concerning Border Protection Measures added to the Trade
Marks Act 1953 in the case of infringing trademarks; and
                                                     
1 As regards laws and regulations relevant to the area under review and notified by New Zealand under
Article 63.2 of the Agreement, reference is made to documents IP/N/1/NZL/2 and IP/N/6/NZL/1.
2 The minutes of this meeting have been circulated as document IP/C/M/16.IP/Q4/NZL/1
Page 2
- the inclusion within the Copyright Act 1994 of Part VII concerning Border Protection
Measures (which has subsequently had some minor, technical amendments in 1996
and 1997).
The two parts in the statutes are very similar in wording.
Both the trademarks and copyright legislation are given effect by associated regulations.
These regulations are as follows:
- the Trade Marks (Border Protection and Transitional Applications) Regulations 1994- the Copyright (Border Protection) Regulations 1994
- the Copyright (Border Protection) Regulations 1994, Amendment No.1
In addition, in respect to certain infringing trademarks, there may be some opportunity for
New Zealand Customs to take ex officio action under the Customs Import Prohibition (Trade
Descriptions) Order 1991.  The effect of this order is explained on page 9 of New Zealand’s responsesto the Checklist of Issues on Enforcement
.3
II. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
1. Is it correct that under New Zealand law the simple removal of an unlawfully affixed
trademark is generally sufficient to permit th e release of the goods concerned into the channels
of commerce in New Zealand (Article 46 of the TRIPS Agreement)?
The New Zealand Trade Marks Act 1953 provides that where imported goods bear an
infringing trademark:
(a) the Courts shall make an order that the goods be:
(i) forfeit to the Crown (New Zealand Government); or(ii) destroyed; or
(iii) otherwise dealt with as the Court thinks fit; or
(b) in cases where importers forfeit infrin ging trademark goods to the Crown (New
Zealand Government), the Chief Executive of the New Zealand Customs Service
(Customs) may dispose of them.
The decision as to the method of disposal of infringing trademark goods by the Courts or
Customs is made in consultation with the right holder.
There have been no instances where the Courts or the Chief Executive of Customs have
allowed the importer to remove the infringing trademark and for such goods to enter the commerce of
New Zealand.
[Follow-up question from the EC]
                                                     
3 Document IP/N/6/NZL/1.IP/Q4/NZL/1
Page 3
What is the legal basis (please specify the pr ovision) pursuant to which the removal of a
trademark unlawfully affixed is not sufficient for New Zealand customs authorities to permit
the release of the goods concerned into th e channels of commerce in New Zealand?
Section 54F of the Trade Marks Act 1953 provides that where Customs is of the opinion that
the goods may infringe a trademark covered by a notice of ownership given by the right holder, then
Customs shall detain the goods for ten working days.
During the period of detention the right hold er may initiate proceedings through the High
Court to establish that the goods infringe its trademark.  The goods will be detained by Customs
pending the outcome of the decision by the Court.
If Customs has not, during the ten day detention period, been served with a notice of court
proceedings by the right holder the goods will be released to the importer.
Section 54F of the Trade Marks Act 1953 requires that Customs shall detain infringing goods,
it does not give Customs the authority to allow the importer to remove the infringing trademark and
release the goods into the commerce of New Zealand.
2. Is confidential information in the context of an inspection pursuant to Article 57 of the
TRIPS Agreement afforded protection under New Zealand law and, if so, on what basis?Please explain (Article 57 of the TRIPS Agreement).
The Copyright Act 1994 and Trade Marks Act 1953 provide for an officer of Customs to
allow any persons having an interest in goods that are under investigation by Customs or subject toCourt proceedings to inspect the goods.
Customs procedures require that the party concerned is only given access to the goods.  They
are not given access to the documents relating to the shipment or the name of the importer or
consignee.  The New Zealand Official Information Act 1982 provides that when a request for
information is made, Customs may withhold info rmation that may commercially prejudice the
position of the party which supplied the information.
[Follow-up question from the EC]
The New Zealand Official Information Act 1982 provides that when a request for
information is made, Customs may withhold information that may commercially prejudice thatposition of the party which supplies the information.  Could the Government please confirm
that this protection extends to:
(a) information provided in the context of  an inspection pursuant to Article 55 of
the TRIPS Agreement;
(b) information regarding third parties (i.e. not limited to the party who supplies the
information); and
(c) all types of confidential information.
A decision to withhold the release of informa tion under the New Zealand Official Information
Act 1982 is considered on a case by case basis.  A decision would have to be made in each case ifIP/Q4/NZL/1
Page 4
information provided in the following instances would unreasonably prejudice the commercial
position of the supplier or subject of:
- information in the context of an inspection pursuant to Article 55 of the TRIPS
Agreement;
- information regarding third parties;
- all types of confidential information.
3. Would a New Zealand court or customs authority allow counterfeit trademark goods
to be re-exported in an unaltered state or be subjected to a different customs procedure,having regard to Section 142(b) of the Copyright Act 1953 and Regulation 7(2) of the TradeMarks (Border Protection and Transitional Applic ations) Regulations 1994 (Article 59 of the
TRIPS Agreement)?
Section 142(b) of the Copyright Act 1994 and Regulation 7(2) of the Trade Marks (Border
Protection and Transitional Applications) Regulations 1994, require that the  Court or the ChiefExecutive Officer of Customs must ensure that no infringing trademark or pirated copyright goods are
disposed of in a manner that would adversely affect the right holder.
If infringing trademark or pirated copyright goods are allowed to be re-exported from
New Zealand in an unaltered state then it woul d only be with the agreement of the right holder.
See also the answer to question 17 from Japan.
4. For the purposes of this review, the European Communities and their Member States
relied upon the provisions of, inter alia, the New Zealand Geographical Indications Act 1994.However, although the Act has been adopted, it is still to be brought into force by theGovernor-General by Order in Council.  Could the Government of New Zealand clarify whenthe Geographical Indications Act 1994 is expected to come into force?
In order to bring the Act into force, there is  a need for regulations to accompany the Act.
These regulations are complex and are taking some time to finalize.  These are now in the final stages
of preparation.  In the light of this it is hoped that the Act can be brought into force in 1998.
5. With regard to cases that involve the infringement of intellectual property, could the
Government of New Zealand provide data on the number of:
- law suits that have been filed including their respective outcome and the average length
from the filing of a complaint until the final judgment;
- injunctions that have been issued (as defined in Article 44 of the TRIPS Agreement)
and explain how such injunctions are being enforced;
- provisional measures (as defined in Article 50 of the TRIPS Agreement) that have been
granted and the average length to obtain such measures (from the request);
- suspensions at the border of counterfeit trademark, pirated copyright goods or in
relation to goods where other intellectual property rights are infringed;IP/Q4/NZL/1
Page 5
- criminal cases including the sentences that have been applied;  whether they have been
executed;  and please also explain what kind of infringement of an intellectual propertyright would be regarded as a violation of criminal law;
- seizures and/or destruction of counterfeit trademark and pirated copyright goods.
Furthermore, could the Government of New Zealand explain and give practical
examples of:
- how the compensation for damages of the infringement of intellectual property rights
is calculated (Article 45.1 of the TRIPS Agreement);
- what would be regarded as "expenses of the right holder" which have to be reimbursed
pursuant to Article 45.2, first half of the first sentence, of the TRIPS Agreement andhow they would be calculated;
- whether attorney’s fees can be reimbursed and how such fees would be calculated;
- whether Article 45.2, second sentence, of the TRIPS Agreement has been implemented
in New Zealand and how such "damages" would be calculated?
New Zealand does not keep statistical data on the numbers of law suits, injunctions,
provisional measures, or criminal cases related to intellectual property.
There have been 29 suspensions at the border for infringing trademarks and pirated copyright
goods since 1 January 1995.  Sixteen of the shipments of infringing trademark and pirated copyright
goods have been destroyed.
Infringements of an intellectual property right that may be regarded as a violation of criminal
law include infringements of copyright works, incl uding illicit recordings, the making or possession
of an object which is known to be used for the making of an infringing copy of a copyright work, or
offences in respect to forging, falsely applying or falsely using trademarks.
The calculation of damages for the infringement of intellectual property rights is dependent on
the facts of each situation, relevant statutory provisions, and the common law rules on damages which
New Zealand has adopted from English law.
As an example, in terms of the statutory prov isions, section 121(2) of the Copyright Act 1994
says that the Court may:
“having regard to all the circumstances and in particular to-
(a) the flagrancy of the infringement; and
(b) any benefit accruing to the defendant by reason of the infringementaward such additional damages as the justice of the case may require.”The Courts have held that “the measure of damage is the depreciation caused by the
infringement to the value of the copyright as a chose in action”:  Hemingway v Mercer (No 2) (1984)
441 NZIPR 273.  In Crystal Glass Industries Ltd v Alwinco Products Ltd, (High Court, Hamilton,
A236/78, 15 April 1983) , the Court held that the measure of the diminution in value of the copyrightIP/Q4/NZL/1
Page 6
caused by the defendant’s infringement was the profit which the plaintiff would have derived from the
sale of the articles produced from the copyright designs that they lost the opportunity of selling as a
result of the defendant’s infringement.  In Hemingway v Mercer  where the plaintiffs had allowed the
defendant to print the infringing wall planners and to apply their own trademark to the product
thereby avoiding damage to their goodwill the plaintiff received an account of profits which covered
any damage through loss of sales.
A licence fee approach may be commonly used.  For example where an architect would have
charged a licence fee for the use of plans the amount of such fee would be awarded as damages.  In
calculating the licence fee amount the Court would look at the length of time required to complete a
similar job and the usual charge-out rate for a person of equivalent experience.
The leading New Zealand case on damages in copyright situations is Feltex Furnishings of
New Zealand Ltd v Brintons Limited (1992) 4 NZBLC 102, 913, (Court of Appeal, Cooke P, Hardie
Boys and McKay JJ).  Where the copyright owner and the infringer were in direct competition for one
project it was held unlikely that the copyright owner would have licensed the infringer to enable it to
win the contract.  The correct approach to measuring damages was to use an assessment of the value
of the opportunity of obtaining the contract, which had been lost by reason of the infringement.  Inassessing the damages the Court was entitled to look at the entire benefit derived from the
infringement, for example the monetary benefit and the goodwill value derived from the infringement.
The Court also allowed for the loss of the “prestige and kudos” factor in obtaining an important piece
of business, thereby arriving at a measure of compensatory damages.
It was held in Interfirm Comparison (Aust) Pty Ltd v Law Society of New South Wales (1975)
6 ALR 445 that where it was difficult to calculate either the value of confidential information misused
or the depreciation to the value of the copyright, compensatory damages should take the form of a
reasonable sum for the unauthorized use by the defendants of the works.  Where the plaintiff’s
business is likely to be directly affected by the defendant’s infringing sale it will be compensated forthe profits it would have made but for the defendant’s activities.  The Court adopted a flexible
approach in Columbia Picture Industries v Robinson [1986] FSR 367 where pirated copies were sold.
Conversion damages may be awarded whereby da mages are awarded on a percentage of the
value of the total article which actually infringed.
“Expenses of the right holder” (which are the subject of Article 45.2) would include the costs
of the right holder in bringing legal proceedings against the infringer.  The normal award of costs is
made on a party and party basis and is not designed to cover all of the successful party’s expenses.
The award of costs is intended to provide a reasonab le contribution by the unsuccessful party to the
successful party’s actual costs.  The standard measure of costs, provided by statute, is a starting point
for the Court’s decision.  In appropriate cases the Court may award costs at a higher level than thescale.
Actual solicitor and client costs reasonably and properly incurred would be reimbursed.  An
itemized summary in sufficient detail to satisfy the Court that the costs have been reasonably and
properly incurred should be given to the Court.  This should include the breakdown between counsel
and solicitors:  Perry Dines Corp Ltd v London Pacific Ltd  (17 April 1997, Barker J, High Court,
Auckland CP2320/88) .
New Zealand has adopted the first of the two options provided for in the second sentence of
Article 45.2, namely providing for the recovery of profits.  A Court may order relief in New Zealandby way of an account of profits.  Under s 121(1) of the Copyright Act 1994 “where, in proceedings for
infringement of copyright, it is proved or admitted that at the time of the infringement the defendant
did not know, and had no reason to believe that copyright existed in the work to which theIP/Q4/NZL/1
Page 7
proceedings relate, the plaintiff is not entitled to damages but, without prejudice to the award of any
other remedy, is entitled to an account of profits”.
Where the infringer knowingly engaged in an infringing activity the Courts may order an
account of profits.  The infringer is treated as having carried on the infringing business on behalf of
the copyright owner and the infringer is required to hand over any profits made.  A successful plaintiffmust elect to seek either damages or an account.  Once an account is requested and ordered, a plaintiff
loses its right to seek damages by way of compensation or conversion:  Caxton Publishing Co v
Sutherland Publishing [1993] AC 178.  A Court retains the discretion to order an award of damages
rather than an account of profits, if it takes the view that an account does not pay sufficient attention
to the losses suffered by the plaintiff as a result of the infringement:  Television Broadcasts Ltd v Tu
(1990) 19 IPR 307.
“Pre-established damages” are not available in New Zealand.
III. REPLIES TO QUESTIONS POSED BY HONG KONG, CHINA
1. New Zealand has an experience of one Border Measure case.  We are interested to
know which IP organization initiated the application and what were the quantity and nature ofinfringing goods involved?  We would also like to know if the New Zealand Customs had anydifficulties in the handling of this case?
To date the New Zealand Customs Service has only had one case where the right holder has
taken action in the High Court against the importation of infringing goods.
This case involved notices accepted by Customs from NationalPak NZ Ltd for the artistic
designs for the packaging of “Glad” freezer bags.  The right holder lodged these notices in order to
prevent the importation of the packaging of “Clean” freezer bags which the right holder considered
infringed its copyright.
After acceptance of the notices Customs intercepted a shipment of 34,200 packages of
“Clean” freezer bags imported by Bazyantine Holdin gs Ltd.  Following receipt of submissions from
the right holder and the importer, Customs made a determination that the shipment may infringe the
copyright in the packaging for the Glad freezer bags owned by NationalPak NZ Ltd.
The High Court ruled that the packaging for the “Clean” freezer bags infringed NationalPak’s
copyright in the “Glad” packaging.  The infringing packaging was destroyed by Customs.
Customs did not encounter any undue difficulties in dealing with this case, the submissions
from the right holder on the reasons why the “Clean” bags infringed its copyright were of
considerable assistance to Customs when making their determination that the bags may infringe thecopyright.
2. We note that a private person in New Zealand can initiate criminal proceedings in case
the relevant authorities decided not to pursue the case for reason that the evidence is not likelyto result in a conviction.  We would like to know how can they initiate such proceedings?  Arethere precedent examples?
Private prosecutions are initiated in the same way as public agencies initiate prosecutions.
This involves initially laying an information under section 12 of the Summary Proceedings Act 1957
(section 13 of that Act specifically provides that any person may lay an information).  In indictable
proceedings, the informant in a private prosecution may go on to present an indictment.  TheIP/Q4/NZL/1
Page 8
procedures for dealing with both private and public prosecutions are the same.  A private prosecutor
will conduct the proceeding in person or through counsel.
There are three relevant ways such prosecutions can be stopped.  First, the Registrar of the
Court has a discretion not to issue a summons in re lation to an information.  This effectively brings
the matter to a close.  This discretion also applies to public prosecutions.  The exercise of thediscretion may be reviewed by a Judge ( Daemar v Soper  [1981] 1 NZLR 66).  Secondly, in some
cases the leave of the Attorney-General or the Solicitor-General (or more rarely a High Court Judge)
is required to commence a prosecution.  Lastly, the Attorney-General or the Solicitor-General can
bring a prosecution to an end by entering a stay  of prosecution (s 378 Crimes Act 1961, ss 77A, 173
Summary Proceedings Act 1957).  Both these powers also apply to public prosecutions.
Private prosecutions are rare.  New Zealand officials are not aware of any such cases in recent
times.
IV. REPLIES TO QUESTIONS POSED BY JAPAN
1. Please indicate the “competent authoritie s” stipulated in Article 51 of the TRIPS
Agreement.
The competent authorities stipulated in Article 51 of the TRIPS Agreement are the
New Zealand Customs Service (Customs).
2. Please explain whether “proceedings leading to a decision on the merits of the case”
stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
The proceedings leading to a decision on the merits of the case stipulated in Article 55 of the
TRIPS Agreement are judicial.
3. Are there any ways other than  the application stipulated in Articles 51 and 52 of the
TRIPS Agreement (hereafter referred to as “t he Application”) which enable a right holder to
request the competent authorities to suspend the release of the goods which infringe intellectual
property rights or which are suspected to  infringe intellectual property rights?
Another way in which a right holder can request Customs to suspend the release of goods is
as a result of the Customs Import Prohibition (Trade Descriptions) Order 1991 which prohibits the
importation of:
(a) Any goods bearing, or to which there is attached in any manner whatsoever, any
statement or indication, including a statement or indication by words, numbers,
marks, pictures or symbols, or a combination thereof, which is incorrect ormisleading as to:
(i) The particular kind or standard, quality, grade, quantity, composition, style, model,
particular history or particular previous use of the goods; or
(ii) The goods being new, or reconditioned, or manufactured, produced, processed, or
reconditioned in a particular place or at a particular time; or
(iii) The country or place of origin of the goods.
(b) Any goods in respect of which there is applied to any covering, packaging, label,
wrapper, ticket, reel or thing in or with which the goods are supplied, any statementIP/Q4/NZL/1
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or indication, including a statement or indication by words, numbers, marks,
pictures or symbols, or a combination thereof, which is incorrect or misleading as
to:
(i) The particular kind or standard, quality, grade, quantity, composition, style, model,
particular history or particular previous use of the goods; or
(ii) The goods being new, or reconditioned, or manufactured, produced, processed, or
reconditioned in a particular place or at a particular time; or
(iii) The country or place of origin of the goods.Customs may suspend the release of goods which infringe intellectual property rights or
which are suspected of infringing intellectual property rights where it can be established that the
infringing trademark gives an incorrect or misleading statement as to the quality, etc, in terms of the
Customs Import Prohibition (Trade Descriptions) Order 1991.
4. Please explain what term your country regards as “a reasonable period within which the
competent authorities shall inform the applic ant whether or not they have accepted the
Application” stipulated in Article 52 of the TRIPS Agreement.
Section 54B of the Trade Marks Act 1953 and section 136 of the Copyright Act 1994 require
that the Chief Executive of Customs shall, within a reasonable period of receiving the notice, advisethe claimant whether the notice has been accepted or declined.  While the legislation does not set out
any period of time in which Customs shall accept or decline a notice, the notice must be considered
without any undue delay.
5. Please explain whether a right holder is obliged to pay any fees to lodge the Application.
New Zealand does not impose any fees on the lodgment of trademark or copyright notices.
The applicant must provide the required security to Customs when lodging a notice(s).
6. Please indicate provisions of laws and ordinances which prescribe the “proceedings
leading to a decision on the merits of the case ” stipulated in Article 55 of the TRIPS Agreement.
And please summarize their contents.
The right holder is required to apply to the Court for an interim injunction for the goods to be
held by Customs pending a hearing to establish that the goods infringe a trademark or copyright.  This
action is taken under the Trade Marks Act 1953 or the Copyright Act 1994, copies of which are
lodged with the Secretariat of the WTO and have been circulated to Members.
7. Please explain the specific procedure, if any, to be applied to the goods which are not
evident whether or not they infr inge intellectual property righ ts, in Article 55 of the TRIPS
Agreement.
Customs procedures for the detention of goods which may infringe on intellectual property
rights include consultation with the right holder or patent attorney to obtain their written advice as to
whether or not the goods infringe the intellectual property right.
Customs has not had any cases where the right holder or patent attorney has not been able to
satisfy it that the goods do or do not infringe the intellectual property right.IP/Q4/NZL/1
Page 10
In cases where there is sufficient evidence to satisfy Customs that the goods may infringe the
intellectual property right, the goods are detained.  New Zealand’s legislation would then require the
right holder to satisfy the Court that the goods infringe the trademark or copyright.
8. Please explain the responsibility that th e competent authorities and other related
authorities take to the right holders when they fail to suspend the release into free circulation of
goods which infringe intellectual property rights  with regard to the suspension based on the
Application or the Ex Officio Action stipul ated in Article 58 of the TRIPS Agreement.
Enforcement of intellectual property rights at the border is a very effective method of
ensuring that infringing goods do not enter the commerce of New Zealand.  In undertaking this role
Customs is very aware of the need to ensure that Customs intervention does not hinder the smooth
flow of trade in genuine goods.
When accepting a notice Customs advises the right holder that given the large volume of
goods imported into New Zealand it cannot guarantee that it will intercept and detain all infringing
goods but will take all necessary steps to intercept such goods.  The right holders and patent attorneys
understand and support this stance.
Customs has a duty of care to ensure that infringing goods are not imported into
New Zealand.  In cases where it can be established that Customs was negligent in undertaking its
duties, right holders have the ability under New Zealand law to take a case through the Courts for
damages against Customs.
Customs cannot take ex officio action against infringing trademark or pirated copyright
goods.
9. Please explain the responsibility that th e competent authorities and other related
authorities take to the right holders when they examine goods which infringe intellectual
property rights and nevertheless release them in to free circulation with regard to the suspension
based on the Application or the Ex Officio Ac tion stipulated in Article 58 of the TRIPS
Agreement.
In cases where it can be established that Customs was negligent and released goods it knew to
be covered by a notice and infringe an intellectual property right, right holders have the ability under
New Zealand law to take a case through the Courts for damages against Customs.
10. Please explain the responsibility that th e competent authorities and other related
authorities take to the importer s when they suspend the release into free circulation of goods
which do not infringe intellectual property rights with regard to the suspension based on theApplication or the Ex Officio Action stipul ated in Article 58 of the TRIPS Agreement.
In cases where it can be established that Customs was negligent in detaining goods that do not
infringe an intellectual property right, the importer has the right to lodge a claim in a Court for any
loss or damage suffered against Customs.
11. Is the right holder informed of identities  of the importers and consignors when the
competent authorities “suspend” the goods which infringe on intellectual property rights or
which are suspected to infringe intellectual proper ty rights, as well as the case where the right
holder is informed of identities of the importer s and consignors stipulated in Article 57 of the
TRIPS Agreement?IP/Q4/NZL/1
Page 11
The right holder is advised of the name of the importer and consignor at the time that
Customs makes a determination that the goods may or do infringe a right and suspends the goods for
ten working days.
12. Please explain the measures to protect conf idential information in the course of the
inspection stipulated in Article 57 of the TRIPS Agreement.  And please indicate provisions of
laws and ordinances which prescribe such measures.
New Zealand’s legislation provides that the right holder and importer may inspect goods
being detained by Customs.  During the inspection period, the parties are only allowed to inspect the
goods.  They are not given access to documents such as the importer’s invoice.
New Zealand’s Official Inform ation Act 1982, provides that, when a request for information
is made, information may be withheld where its release may prejudice the commercial position of the
party which supplied the information.
13. Please explain the procedures of detentions and seizures to be ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
The main elements of the procedures relating to the detention of goods by Customs are
outlined below.
Suspension of release by customs authorities (Article 51)
Customs can suspend the release into circulation of infringing trademark or pirated copyright
goods where the right holder has lodged a notice requiring Customs to detain any pirated or infringing
copies of the items that are in or at any time come into the control of Customs.
Application (Article 52)
The notices referred to above require the right holder to specify ownership in the copyright
work or a New Zealand registered trademark.  Regulations made under the Trade Marks Act 1953 and
the Copyright Act 1994 require evidence in support of a claim of ownership; every person who gives
a notice under section 54B of the Trade Marks Act 1953 and section 136 of the Copyright Act 1994 is
required to furnish to Customs evidence in support of the claim that goods infringe the trademark or
copyright; and Customs may direct that such evidence be furnished at the time the notice is given or at
any subsequent time.
The information in the notices, and any additional evidence that is required, ensures that
Customs has sufficient information to identify infringing goods at the time of importation.
The notices are valid for no longer than five years from the date of the notice.  In the case of:- Trademarks, if the registration of the trademark to which the notice relates will
expire within the period of five years from the date of the notice, the notice is validfor no longer than that period for which the current registration will last.
- Copyright, if the copyright in the work to which the notice relates will expire within
the period of five years from the date of the notice, the notice is valid for no longer
than the period for which the copyright will last.IP/Q4/NZL/1
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Security or equivalent assurance (Article 53)
Regulations made under the Trade Marks Act 1953 and the Copyright Act 1994 provide for
security and indemnity in respect to infringing trademark or pirated copyright goods.
- Every person giving a notice under the Trade Marks Act 1953 and the Copyright
Act 1994 in respect to infringing trademark and pirated copyright goods is required
to give a security or an indemnity or both a security and an indemnity to persons
determined by Customs and in an amount, and on such terms and conditions, as may
be determined by Customs.
- Customs may direct that a security or an indemnity or both a security and indemnity
be given at the time the notice is given or at any subsequent time.
- Every person to whom an item is to be or has been released from detention under the
legislation is required to give a security or an indemnity or both a security and an
indemnity to Customs and in an amount, and on such terms and conditions, as may
be determined by Customs.
Customs has determined that persons giving notices under the above legislation must provide:- a security of NZ$5,000 which is deposited in Customs trust account (this figure may
be set at a higher or lower figure where it is considered necessary); and
- completed forms of indemnity.This ensures that Customs is protected against action taken under a notice and prevents abuse
of the legislative provisions by right holders.
Duration of suspension (Article 55)
Customs may only enforce the border enforcemen t provisions in respect to the Trade Marks
Act 1953 and the Copyright Act 1994 where:
- a notice has been accepted by Customs; and- the goods have been imported and are in the control of Customs.In such instances, Customs may conduct any investigation in order to establish whether or not
the goods appear to infringe the right holders trademark or copyright.
In undertaking this investigation, Customs may require the right holder or any person having
an interest in the goods to supply such informa tion as Customs may specify in order to determine if
the goods infringe the right holders trademark or copyright.  This information must be supplied to
Customs within ten working days.
Customs is then required, within a reasonable period of time, to make a determination as to
whether or not the goods appear to infringe a regi stered trademark or copyright.  A written notice of
determination must then be served on the right holder and any other person having an interest in the
goods, advising the outcome of the investigation.
Goods which Customs determines are covered by a notice and infringe a copyright or
trademark, may be detained (not seized) for ten working days.  If, within this detention period,IP/Q4/NZL/1
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Customs has not been advised that a person other than the importer or consignee has commenced
proceedings in the Court to establish that the goods breach their rights, the goods are released to the
importer.
During this detention period any person having an interest in the goods, for example an
importer, may apply to the Court for an order that:
- the notice be discharged; or- the goods are to be released; or- that the goods are not infringing trademark or pirated and they are not covered by
the notice.
Customs will deal with the goods in accordance with the Court’s decision.
The ten working days detention period may, on application to Customs, be extended to twenty
working days.
In the case of infringing trademark goods, the importer or consignee may, by notice in writing
to Customs, consent to the goods being forfeit to the Crown.
14. Please explain the procedures to appeal aga inst any decisions ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
The importer of the goods is required to lodge proceedings in the High Court of New Zealand
to prove that the goods are not infringing trademark or pirated copyright goods.
15. Please explain the basis for calculating the s ecurity or equivalent assurance stipulated in
Article 53 of the TRIPS Agreement that the competent authorities may require of an applicant
when they suspend the relea se into free circulation.
The Chief Executive of Customs has determined that persons giving notices under the Trade
Marks Act 1953 and the Copyright Act 1994 shall provide Customs with :
- a security of NZ$5,000 which is deposited in Customs trust account.  This figure
may be set at a higher or lower figure where it is considered necessary.
- complete a form of indemnity.
A flexible approach has been adopted to the application of the above security requirements.
There are no limits on the number of notices that may be covered by a security given by a right
holder.  A security may also cover notices given by a right holder over a period of time.
The security requirements were set by Customs at a level which would reasonably cover any
costs that it may incur in the detention of infringing goods.  These could include transport and storage
costs for the goods.
16. Please explain who shall pay the cost of detentions based on Article 51 of the TRIPS
Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
The costs of detention, e.g. storage and transport costs incurred by Customs under Article 51
and destruction costs under Article 59 would be paid by the right holder.IP/Q4/NZL/1
Page 14
Customs does not require the right holder to pay for its officers’ time incurred in investigating
as to whether or not the goods infringe a trademark or copyright.
17. Please explain what kind of cases are regar ded as “the exceptional circumstances” in
which the competent authorities may allow re-exportation of counterfeit trademark goodsstipulated in Article 59 of the TRIPS Agreement.
Customs has not allowed importers of infringing goods to re-export them from New Zealand
to another country.
Section 54H of the Trade Marks Act 1953 allows for importers of infringing trademark goods
to forfeit them to the Crown (the New Zealand Government).
The Chief Executive of Customs may under Regulation 7 of the Trade Marks (Border
Protection and Transitional Applications) Regulations 1994 dispose of these goods.  When making the
decision to dispose of the goods the Chief Executive must take into account the requirements of the
right holder.
The only exceptional circumstance in which the Chief Executive of Customs has allowed the
re-exportation of infringing trademark goods is where the trademark owner has agreed to the goods
being given away as overseas aid.  The goods are given by Customs and the trademark owner on the
condition that they are to be given away and not sold.
18. Please explain whether the amount of da mages which judicial authorities order the
person who infringes intellectual property rights to pay the right holder is adequate
compensation for the injury the right holder ha s suffered, and what criteria and the way for
calculation to decide the amount for compensa tion.  Do the expenses include appropriate
attorney’s fees?
4
To date Customs has only had one case where the right holder has taken action through the
Court against an importer of infringing goods. In this case the goods were destroyed.  No damages
were awarded by the Court.  In all other cases the importers have decided to forfeit the goods to theCrown.
See also the answer to question 5 from the European Community and its Member States for
an indication of the approach likely to be taken by New Zealand courts to the question of damages
relating to the infringement of intellectual property rights.
[Follow-up question from Japan]
1. In response to question 18 from Japan, New Zealand’s response refers to the response to
the European Communities and their Member States’ question 5 for damages relating to the
infringement of copyrights.  Please describe the damages relating to the infringement of other
intellectual property rights, including the w ay of calculation to decide the amount for
compensation of trademarks, as well as patents, industrial designs and layout-designs of
integrated circuits.
As noted in the response to the European Communities, the calculation of damages for the
infringement of intellectual property rights is dependent on the facts of each situation, relevant
                                                     
4 Reference is made to New Zealand's reply to question 5 of the Checklist of Issues on Enforcement in
document IP/N/6/NZL/1.IP/Q4/NZL/1
Page 15
statutory provisions, and the common law rules on damages which New Zealand has adopted from
English common law.
On page 5 of New Zealand’s responses to the Checklist of Issues on Enforcement,5 it is noted
that the courts have wide powers in the award of damages, including the recovery of profits, and
expenses, including attorney’s fees.  These powers can derive from the common law or statute.
In respect to statutory provisions, examples of  provisions governing the award of damages by
the courts include the following:
Patents
A plaintiff can choose to have an account of profits instead of damages (section 69 of the
Patents Act 1953).
There are several situations in which damages or account of profits may not be awarded, i.e.
where the defendant at the date of the infringement was not aware, and had no reasonable grounds for
supposing, that a patent existed (section 68(1) of the Patents Act 1953); where a party has failed topay a renewal fee within the prescribed period and before any extension of that period (section 68(2));
and where there is an amendment to the patent specification and there has been use of the invention
before the date of the decision allowing the amendment unless the Court is satisfied that the original
specification was framed in good faith and with reasonable skill and knowledge (section 68(3)).
Industrial designs
In respect of industrial designs, the Designs Act 1953 provides that damages or account of
profits cannot be awarded against an innocent infringe r i.e. a defendant who proves that at the date of
the infringement the defendant was not aware and had no reasonable ground for supposing that thedesign was registered in New Zealand (section 13).
Layout-designs
Part IV of the Layout Designs Act 1994 provides for the remedies for infringement.  These
remedies include the payment of damages or an account of profits.
V. REPLIES TO QUESTIONS POSED BY SWITZERLAND
1. Please explain whether international treaties which contain detailed provisions
addressed to the (judicial) authorities and not to the State itself are considered as self-executing
in your system?  If not, when there is a divergence between the intellectual property
legislation/practices and the international agreement in your country, does the latterautomatically prevail?  If not, please explai n the means allowing your country to fulfil the
international obligations?  Please ci te the relevant texts or jurisprudence .
Treaties do not have force of law in New Zealand until they are enacted into legislation.
Before the Government ratifies or accepts an intern ational agreement it assesses its ability to comply
with any obligations in the relevant instrument .  Where necessary, changes are made to domestic
legislation.
The New Zealand Government does not enter into internationally binding (or non-binding)
commitments that are inconsistent with its domestic law.  Before concluding a treaty, the
                                                     
5 Document IP/N/6/NZL/1.IP/Q4/NZL/1
Page 16
New Zealand Government ensures that its domestic legislative and policy framework enables effect to
be given to any obligations assumed under the treaty.  This may be achieved partly through existing
legislation, regulations and policies, or it may require passage of new legislation or regulations.
Where new legislation is required to give effect to New Zealand’s international obligations, the
legislation may not necessarily repeat the specific wording of the text, but will reflect fully the
obligations arising from the agreement.
2. Article 55 of the TRIPS Agreement provides th at “... in appropriate cases, this time limit
[of ten days] may be extended by another ten working days”.  Is such time extension foreseen in
your laws?  If yes, please cite the relevant provisions.  If not, please explain how an applicant
can avail himself of this possibility as provided by the TRIPS Agreement?
Section 140(2) of the Copyright Act 1994 and section 54F(2) of the Trade Marks Act 1953
provide that the Chief Executive of the New Zealand Customs Service (or a Customs officer with
delegated authority) may extend the period of detention of counterfeit or printed goods from ten to
twenty working days.
Applications to extend the period of detention by  a further ten working days are considered by
Customs on a case by case basis.  The applicant must submit valid reasons for requesting the further
period of detention.  The only application Customs has received related to the closure of the High
Court over the Christmas holiday period.  This application was approved.
VI. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
1. Please describe briefly the procedure that mu st be followed by a foreign party to initiate
an enforcement procedure in each of the courts identified in IP/N/6/NZL/1 and cite the legal
authorities establishing those procedures.
The District Court Rules 1992 (DCRs), as provided under section 122 of the District Courts
Act, regulate the practice and procedure of the District Court.  The practice and procedure of the High
Court in all civil proceedings is regulated by the High Court Rules 1985 (HCRs) as set out in the
Second Schedule of the Judicature Act 1908.  Neither the High Court nor District Court Rules provide
different rules for foreign plaintiffs commencing actions in New Zealand.
Proceedings in the civil jurisdiction may be commenced in either the District Court or the
High Court.  Whether a matter is prosecuted in  the High Court or the District Court will be
determined by the type of offence category (i.e. purely indictable, indictable able to be prosecuted
summarily, summary) and the maximum penalty which the prosecution seeks to impose.  Civil actions
can be initiated in the District Court, if they involve a sum not exceeding NZ$200,000, and in the
High Court for a greater amount.  The most serious offences (i.e. purely indictable offences) can only
be prosecuted in the High Court by way of indi ctment.  Some other indictable offences can be
prosecuted either in the High Court or the District Court (s 6 Summary Proceedings Act 1961 and
First Schedule) and the prosecution decides this.
Civil actions are commenced in the District Court and High Court by the plaintiff, domestic
or foreign, filing a statement of claim which is a statement of alleged facts giving rise to the action(r 112, DCRs; r 106 HCRs).  The form of the statement of claim is provided in the First Schedule of
the Rules.  A notice of proceedings must be filed with the statement of claim (r 126 DCRs; r 120
HCRs).  The notice of proceeding is signed by the plaintiff or counsel, states the place and time for
filing a defence and informs the defendant that, if a statement of defence is not filed within the
allotted time, the plaintiff can proceed to judgment  of his or her claim and judgment can be entered
without the defendant’s presence (r 127 DCRs; r 121 HCRs).  The office of the court in which the
documents should be filed is generally the court nearest to the defendant’s residence or business (rIP/Q4/NZL/1
Page 17
113 DCRs; r 107 HCRs).  The documents filed in the court to commence an action must also be
served on the defendant (r 131 DCRs; r 125 HCRs).
Rule 725 ZF (HCR S) provides that an application to the High Court for the revocation of a
patent is made by way of originating application as set out in rules 458 D-M.  Under rule  725 ZK  of the
High Court Rules the plaintiff in an infringement proceeding must provide particulars of breaches,and specify what aspects of the specification are allegedly infringed, and give examples of each type
of infringement.
Under rule 60 of the High Court Rules the Cour t may order the giving of security for costs
where a plaintiff is resident outside New Zealand.
In relation to commencing criminal proceedings, this is usually done by the police laying an
information or making a complaint in the District Court; although any person can do this (s 13
Summary Proceedings Act 1957).  The Commerce Commission has primary responsibility for laying
the information in respect of forged or falsely ap plied or falsely used trademarks.  An information
contains a sworn assertion by a named person, the informant (usually a police officer), that the
defendant is suspected of having committed a specified offence.  It must be in the form prescribedunder the Second Schedule to the Summary Proceedings Act 1957.  The court in which the
information is laid will generally be that nearest to where the offence was alleged to have been
committed or where the informant believes that the defendant may be found (s 18 Summary
Proceedings Act 1957).
Alternatively, where the defendant has been arrested on a charge and no information has been
laid, the particulars of the charge are entered on a charge sheet and laid in the court in the same way
as an information.
When the prosecution wishes to proceed by way of indictment in the High Court (after a
preliminary hearing, committal for trial etc), a formal charge is presented to a judge alleging that the
person named has committed a specified indictable offence (generally more serious offences).  The
indictment must be in the form prescribed in the Second Schedule to the Crimes Act 1961.
Private prosecutions can be brought (Summary Proceedings Act 1957; s 345(2) Crimes Act
1961).  However, sometimes the leave of the Attorney-General or Solicitor-General is required and
either can bring such a prosecution to an end by entering a stay of proceedings in court (s 378 Crimes
Act 1961; ss 173 and 77A Summary Proceedings Act 1957).
The Court of Appeal Rules 1955 pursuant to the Judicature Act 1908, relate to civil appeals.
Under rules 6 and 10 applications to the Court of Appeal are brought by motion.  The applicant must
file a notice of motion, a copy of the judgment below and a copy of the case on appeal.
In respect of Privy Council appeals an appellant commences normal appeal procedures within
New Zealand pursuant to the New Zealand (Appea ls To The Privy Council) Order 1910 (Imp) and
completes the appeal in England pursuant to the Judicial Committee (General Appellate Jurisdiction)
Rules Order 1982.  Applications to the Court (the C ourt of Appeal or the High Court) for leave to
appeal are by motion.  The motion may be made orally at the time of judgment or by notice of motion
filed and served on the opposite party within 21 days after the date of judgement.
2. Please identify any requirement that a foreign party must meet to initiate a proceeding
in the courts that is not required of a national or resident of New Zealand and cite the legalauthorities providing for those differences.IP/Q4/NZL/1
Page 18
There are jurisdictional limits on potential foreign parties bringing actions in New Zealand.
In the civil area, the High Court only has such jurisdiction as may be necessary to administer the laws
of New Zealand (s 16 Judicature Act 1908).  In the criminal area, offences are not punishable in
New Zealand unless they are offences under Ne w Zealand law and people cannot be prosecuted in
New Zealand for offences committed outside New Zealand (ss 9 and 6 Crimes Act 1961).
There are no special procedures to be followed by a foreign party in initiating proceedings in
New Zealand.  However, once proceedings have been commenced some allowance is made for
overseas parties.  For example, rule 316 of the District Court Rules provides that a party required to
make discovery of documents in its possession has 42, rather than 28, days to do so if it is resident
outside New Zealand.
3. Article 41.1 of the TRIPS Agreement requires establishment of safeguards against abuse
of judicial enforcement procedures, including provision for adequate compensation for injury
suffered because of such abuse.  Please describe the means available under the law of
New Zealand to prevent abuse of judicial procedures or to remedy damages suffered as a result
of such abuse and cite the le gal authorities for those means.
Costs available to a plaintiff may deter abuse of process.  Under rule 46 of the High Court
Rules the High Court has a wide discretion as to the costs, but subject to express statutory provisions.
That discretion is subject to the general rule th at “costs follow the event” except where the Court
considers that there is reason to order otherwise.  This means that the unsuccessful party will be
required to pay the costs of the successful party.  Depriving the successful party of some or all of itscosts can be used by the Courts as a disciplinary measure.  The Court may even require the successful
party to pay the unsuccessful party’s costs:  Verna Trading Pty Ltd v New India Assurance Co [1991]
1 VR 129.  The measure of costs set out in the Second Schedule to the High Court Rules is the
starting point for a Court’s decision on costs.  However the High Court may make an order for costs
otherwise than according to scale where the scale would not achieve a reasonable contribution:Morton v Douglas Homes Ltd (No 2) [1984] 2 NZLR 620.  The High Court may in the award of
damages consider whether arguments are advanced without substance, whether the presentation of a
case has unduly lengthened the duration of the case or whether the Court’s process is abused:  DFC
NZ v Bielby  [1990] 3 PRNZ 405.
Under rule 477 if it appears to the Court that in relation to a proceeding the proceeding is an
abuse of the process of the Court the High Court may order that the proceeding be stayed or dismissed
generally or in relation to any claim for relief in the proceeding.  Rule 481 of the District Court Rules
is the District Court equivalent.
See also the answer to question 4.
4. Please explain any provisions in the enfo rcement system in New Zealand that ensure
expeditious remedies.  In addition, please explain what provisions are available to prevent
deliberate delays by the parties to a proceeding and indicate the circumstances in which such
provisions will be applied.
Civil
Under the heading of expeditious remedies, in the civil area, the summary judgment and
judgment by default proceedings are fast-track ways of plaintiffs obtaining judgment without the
necessity for a full defended hearing.
Judgment by default can arise when the defendant does not file a statement of defence within
the time limits specified in the notice of proceeding and a liquidated amount of money is the subjectIP/Q4/NZL/1
Page 19
of the dispute.  Once the time limits have expired, the plaintiff can seal final judgment for a sum not
exceeding the sum claimed in the plaintiff’s statement of claim, with interest and costs (r 463 DCRs;
r 460 HCRs).
The summary judgment procedure arises when the plaintiff files an application for summary
judgment and the court is satisfied that the defendant has no arguable or reasonable defence to theaction (r 152 DCRs; r 136 HCRs).  This should be done when the statement of claim and notice of
proceeding is filed.  The application must be accompanied by an affidavit verifying the allegations in
the statement of claim and showing the plaintiff’s belief that the defendant has no defence (r 154
DCRs; r 138 HCRs).  The procedure obviates the need for a full defended hearing, although the
application is heard in open court (r 262(2) DC Rs; r 238(3) HCRs) and judgment is entered at a
hearing.  A claim for breach of copyright may be made in a summary judgment application
(Horticultural Automation Ltd v ATI Engineering Ltd, (5 September 1996, Master Thomson, High
Court, Napier CP10/96).
The main ways of preventing or addressing deliberate delaying tactics by one of the parties to
proceedings is via an award of costs at the end of the case in civil proceedings and stays or striking
out of proceedings.
In relation to awards of costs, the court ha s broad discretion (r 45 DCRs; r 46 HCRs).  The
general rule is that costs follow the event, however, the court can award costs against a party for
breach of procedure.  This heading includes:  bringing a procedure for a collateral purpose, adoption
of delaying tactics to wear the other party down, fa ilure to comply with the Rules or a court order,
breach of injunctions and pre-trial directions, poor pleadings or presentation of the case, and
unreasonable refusal to settle and unnecessary applications.
Interest is payable on judgment debts from the time of judgment until judgment is satisfied
pursuant to rule 538(1) of the High Court Rules.  In addition interest is payable on costs although ithas not been distinctly decided in New Zealand whether interest runs from the date the judgment for
costs is given or from when the costs are quantified.
In civil proceedings, rule 477 of the High Court Rules gives the court power to stay
proceedings where, among other things, the proceeding is an abuse of process of the court.  Rule 481of the District Court Rules is the District Court equivalent.
Rule 186 of the High Court Rules provides for striking out all or any part of the proceedings,
at any stage and without prejudice to the inherent jurisdiction of the court in several situations
including:
- where a pleading is likely to cause delay in the proceeding; or- where a pleading is otherwise an abuse of the process of the court.
In the District Court, rule 209 pertains.IP/Q4/NZL/1
Page 20
Criminal
In criminal proceedings, the provisions authorizing stays of proceedings by the Attorney-
General are ss 77A and 173 of the Summary Proceedings Act 1957 and s 378 of the Crimes Act 1961.
In addition, a prosecution may be discontinued when the court discharges the case under s 347 of the
Crimes Act 1961.  This may happen when to continue the proceedings would be unfair or oppressiveor would otherwise damage public confidence in the administration of justice.  To some extent, this
overlaps with the High Court’s inherent power to stay proceedings on the ground of abuse of trial
process.
5. Article 41.2 addresses, among other things, the cost of judicial and administrative
enforcement proceedings.  Please describe any fees charged by judicial officials for filing legal
actions involving intellectual property or for pursu ing such actions once initiated, cite the legal
authorities for such fees, and provide copies of the documents used to inform the public of such
fees.
Normal court fees will apply.  Fee requirements are set out in the schedules to the District
Court Fees Rules 1992 and the High Court Fees Rules 1992, copies of which are set out in the Annex.
6. Article 41.2 also addresses the timeliness of judicial and administrative enforcement
proceedings.  Please cite the legal authorities establishing any time limits for judicial and
administrative proceedings.
Civil
Under the District Court Rules governing civil proceedings, some of the more notable time
limits on procedures include:
- If a defendant wishes to defend a civil action, then he or she must file a statement of
defence in the court within 30 days of the statement of claim (etc) having been
served on him or her.  If no such document is filed, then the plaintiff can apply for
judgment by default (r 147).
- If the plaintiff has filed an application for summary judgment, the defendant has 21
days in which to file a notice of opposition and 30 days from receiving the notice of
proceeding to file a statement of defence (r 181).  A hearing is then held to
determine whether there is a defence.  If summary judgment is not opposed, the
plaintiff proceeds to a hearing and is awarded summary judgment.
- The time for filing a statement of defence when an application for summary
judgment has been dismissed is within 30 days of the dismissal (r 164).
- A party required to answer interrogatories (questions) shall do so within 14 days (or
28 days if the party is resident outside New Zealand) after the day on which the
notice is served on him or her (r 301).  The same time period applies to a partyrequired to give discovery (r 316).
The District Court Civil Caseflow Management  Practice Note, which is a judicial practice
note for the Auckland District Court Pilot 1995, commenced in September 1995.  Along with other
case management initiatives, it sets down time frames for conducting civil cases in those DistrictCourts.  The standard timetable is as follows:IP/Q4/NZL/1
Page 21
1. Within 28 days of filing and service of statement of defence each party shall file and
serve on all other parties to the proceeding a verified list of documents.
2. Within 14 days of service of verified lists the parties involved shall complete
inspection.
3. Applications for any other interlocutory remedies shall be filed and served within 14
days of completion of inspection.
4. Where third or subsequent parties are joined without need of leave then as a between
the defendant/s and third party/ies and so on this timetable shall take effect upon the
filing and service of the third party defence.
The High Court Rules prescribe time limits throughout the civil process similar to those
applying in the District Court.  In the High Court, the Chief Justice’s Civil Caseflow Management
Practice Note assigns management tracks to all cases, apart from admiralty proceedings.  The Practice
Note embodies changes made to civil procedure at the Auckland and Napier High Courts from 1 May
1994.  The tracks are the intermediate, swift, standard and complex tracks.  Each has a differenttimeline.  The timeline is from filing to disposition by settlement or judgment.  The tracks are:
- Intermediate - cases which receive a hearing date on filing- Swift - urgent cases- Standard - cases not on any other track- Complex - likely trial over five days.
Criminal
In criminal proceedings, there are caseflow management judicial practice notes which
regulate the length of jury trials in the High Court and District Court.  In the High Court, the practice
note was issued by the Chief Justice and commenced as a pilot in the Wellington High Court on1 October, 1995.  The practice note for the District Court was issued by the Chief Judge, began in
Wellington District Court, and was extended to  the other courts throughout New Zealand from
7 October 1996.  The practice notes includes the following timeframes:
- Period between committal for trial until first call-over:  up to seven weeks- Period between first call-over and trial date: up to eleven weeks- Period between committal and trial date: up to 18 weeks where no pre-trial matters
and 22 weeks where a second call-over is necessary before a trial date can be set.
- An indictment is to be made available within 42 days of committal.See also the answer to question 4 above.
7. Article 41.3 of the TRIPS Agreement requires that decisions on the merits of a case
preferably be in writing, the better to determin e the reasoning on which the decision is based.
Please state, with regard to each type of cour t identified in IP/N/6/NZL/1, whether judges must
render their decisions in writing and cite the le gal authorities requiring such written opinions.IP/Q4/NZL/1
Page 22
As a matter of practice, judges in all the courts make notes of the factual and legal issues and
the determination of those.
In the District Court, section 60 of the District Courts Act 1947 provides that in any hearing
of proceedings in which there is a right of appeal without leave, the judge must make (or cause to be
made) a note of:
- the facts in evidence;- any question of law or equity raised at the hearing; and- of his or her decision on them and on the determination of proceedings.
The provision applies to both civil and criminal proceedings.
In High Court criminal proceedings, section 353 of the Crimes Act 1961 requires the
Registrar to keep the “Crown Book”, which is deemed to be a formal record of the proceedings.
Subsection (8) says that this provision does not dispense with the taking of notes by the Judgepresiding at the trial.
Rule 22 of the Criminal Appeal Rules 1946 allows the Court of Appeal to direct the trial
judge to furnish it with a written report of his or her opinion on the case, or on the point, which is the
subject of the appeal.
Civil and administrative procedures and remedies
8. Article 42 requires that defendants be notified of judicial and administrative intellectual
property enforcement proceedings brought against them.  Please describe the proceduresfollowed for notifying defending parties regarding  proceedings that have been initiated against
them, indicate the information provided regarding  the proceeding and cite the legal authorities
establishing these procedures .
In civil proceedings, there are service requirements when a party files documents in the court.
These are set out in the High Court and District Court Rules.  Rule 131 of the District Court Rules
states that, except as otherwise provided in an Act or the Rules, any statement of claim and notice of
proceeding must be served on the defendant named in them.  Except where the court directs
otherwise, personal service is required (r 132 DCRs).  Service must be prompt and take place as soon
as possible after the documents have been filed in th e court.  Service more than 12 months after filing
will result in the discontinuance of the proceedings (r 133 DCRs).  The period of service can be
extended up to six months on the plaintiff’s application to the Registrar or the court if the latter aresatisfied reasonable efforts have been made to effect service (r 134 DCRs).  In the High Court, the
Rules are substantially the same: rules 125-128 High Court Rules pertain.
The answer to question 1 above indicates the information contained in the notice of
proceeding and statement of claim.
In criminal proceedings when an information is laid, the court can issue a summons, or a
warrant to arrest the defendant and bring him or her before the court (s 19 Summary Proceedings Act
1957).  The defendant summonsed to appear must be so summonsed within 21 days after the date on
which the registered letter is posted.
9. Article 43.2 provides that, in the event a party refuses to provide information ordered
by the judicial officials, those officials may be authorized to make preliminary and finalIP/Q4/NZL/1
Page 23
determinations adverse to that party.  Please describe what sanctions may be imposed on a
party that refused to provide ordered information and under what circumstances those
sanctions are imposed, citing the legal authority for those sanctions.
Civil
In New Zealand, the Courts can, through an order for “discovery”, order that information
which is evidence be produced by a party which has the evidence within its control.  In civil
proceedings, barring legitimate claims of privilege for particular information, when a person on whom
a notice for discovery of documents has been served has refused to comply and produce certain or all
of the documents, the other party may issue an order compelling compliance (r 319 DCRs; r 297
HCRs).  This can now be done without the need for an interlocutory application and the costs of the
order shall be paid by the non-complying party.  In the High Court, rule 317A of the High Court Rules
provides that the court can order a person guilty of contempt for non-compliance with an order for
discovery.
In civil proceedings where a witness refuses to produce a document or answer a question, and
there is no valid claim to privilege which can be made, the court can hold the witness in contempt of
court (s 112 District Courts Act 1947; s 56C Judicature Act 1908).
Criminal
In criminal proceedings, documents and articles can be seized pursuant to a search warrant
issued under section 198 of the Summary Proceedings Act 1957.  In proceedings, a witness can also
be punished for contempt for failing to provide evidence, subject to the defendant’s right of silence
and any valid claim of privilege by the witness.
Provisional measures
10. Article 50.2 requires that judicial authorities be authorized to grant provisional
remedies when a delay is likely to cause “irreparab le harm” to the right holder.  Please describe
briefly what is required by the authorities to establish “irreparable harm” to the right holder.
The New Zealand situation in respect to the grant of provisional remedies is discussed in
New Zealand’s responses to the Checklist of Issues on Enforcement6 on page 3 concerning injunctions
and page 5 in the response to question 10.
In addition, while not specifically considering the words “irreparable harm”, some assistance
on the approach which New Zealand courts take in this type of situation can be gained from a recent
court decision related to ex parte  proceedings.  There the Court commented on the meaning of the
words “serious detriment”.  The Court said that the words encompass “cases where it is urgently
necessary to preserve a material status quo” ( Colonial Mutual Life Assurance Society Ltd v Wilson
Neil Ltd  [1993] 2 NZLR 617, at 629).
Special requirements related to border measures
11. Article 57 requires inter alia  that, where the decision on the merits favours the right
holder, the competent authorities also may be  given authority to give the right holder
information regarding the importer, consignee or consignor.  If competent authorities in
New Zealand can provide information regarding the importer, consignee or consignor to theright holder, please explain how information regarding names and addresses of consignors,
                                                     
6 Document IP/N/6/NZL/1.IP/Q4/NZL/1
Page 24
importers and consignees and quantities of goods are provided to the applicant after a positive
decision of infringement is made, eg. author ities automatically providing information or by
submission of a written request from the right holder, etc.
The right holder is advised of the name of the importer, consignor and quantity of the goods
at the time that Customs makes a determination that the goods may or do infringe the right andsuspends the goods for ten working days.
Criminal procedures
12. Article 61 requires that criminal penalties be sufficient to provide a deterrent at least for
wilful trademark counterfeiting and copyright piracy.  Please explain how the penalties
provided under the laws of New Zealand comply with that obligation.
For an explanation of how the penalties provided under New Zealand law in respect of
copyright piracy comply with the obligation under Article 61, please refer to New Zealand’s
responses to the Checklist of Issues on Enforcement,6 in particular to pages 11 and 12 which contain
the response to question 24 and to the relevant part of the table on page 14.
In respect to trademarks, please also refer to the response to question 24 as discussed above.
[Follow-up questions from the US]
1. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, inte grated circuit layout-design and trade secret
enforcement for each of the years 1996 and 1997, including the number of cases filed;
injunctions issued; infringing products seized; infringing equipment seized; cases resolved
(including settlement); and the amount of damages awarded.
New Zealand does not collect detailed statistical data of the kind required to respond to this
question.
However, as previously outlined in reply to a question from Hong Kong, China, it can be
reported that the New Zealand Customs Service has had only one case where the right holder has
taken action in the High Court against the importation of infringing goods.
This case involved notices accepted by Customs from NationalPak NZ Ltd for the artistic
designs for the packaging of “Glad” freezer bags.
After acceptance of the notices Customs intercepted a shipment of 34,200 packages of “Clean”
freezer bags imported by Bazyantine Holdings Ltd.
The High Court ruled that the packaging for the “Clean” freezer bags infringed NationalPak’s
copyright in the “Glad” packaging.  The infringing packaging was destroyed by Customs.
2. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringement fo r each of the years 1996 and 1997, including the
number of raids, prosecutions, convictions and the amount of fines and/or jail terms (including
whether the fines were paid and whether the jail term was actu ally served or was suspended)
and any other information establishing that your criminal system operates effectively to detercopyright piracy and trademark counterfeiting.IP/Q4/NZL/1
Page 25
New Zealand does not collect detailed statistical data of the kind required to respond to this
question.
However, New Zealand has a well developed and comprehensive legal system combining the
English common law system with legislation.  The court structure, powers of the courts and the
remedies available to the courts ensure that both ci vil and criminal cases are considered in a fair and
expeditious manner.  This includes cases related to copyright piracy and trademark counterfeiting.
New Zealand’s criminal system conforms with the requirements of the TRIPS Agreement.IP/Q4/NZL/1
Page 26
ANNEX
SCHEDULE
FEES PAYABLE IN RESPECT OF PROCEEDINGS IN DISTRICT COURTS
                                   NZ$
  1. Filing of the original        40.00
  document commencing any
  proceeding (other than an  interlocutory proceeding) to
  which these rules apply,
  unless otherwise provided
  for
  For the purposes of this  paragraph the original
  document commencing any
  proceeding is,--
  (a) In the case of a
  proceeding commenced by  statement of claim, the
  statement of claim; and
  (b) In the case of an appeal
  or cross-appeal, the notice
  of appeal or other document  by which the appeal or
  cross-appeal is instituted;
  and
  (c) In every other case, the
  first document (other than a  caveat or a notice of motion
  for directions as to
  service) filed in the
  proceeding by the plaintiff
  which gives to the Court and
  to the opposite party (if
  any) particulars of the  claim made or of the order
  or other relief sought by
  the plaintiff.
  2. Filing an interlocutory
  application--
  (a) In the case of an            140.00
  interlocutory application
  for an interim injunction
  (b) In every other case          80.00  (including an interlocutory
  application for summary
  judgment)IP/Q4/NZL/1
Page 27
  3. Filing--
  (a) Statement of defence; or
  (b) Amended statement of
  defence; or
  (c) Counterclaim; or  (d) Statement of defence and
  counterclaim where both are
  included in the one
  document; or
  (e) Amended statement of
  claim; or
  (f) Appearance                   50.00
  4. Filing the first              60.00
  affidavit filed by a party
  in answer to an affidavit
  filed in support of an  interlocutory application
  for summary judgment
  5. Filing an application for     130.00
  a fixture for the hearing of  any proceeding (other than
  for an interlocutory
  proceeding or an appeal or
  cross-appeal)
  6. Setting down appeal or        130.00
  cross-appeal for hearing
  7. Hearing fee for each half     230.00
  day or part thereof, after  the first half day
  This paragraph applies,
  unless otherwise provided,
  in respect of the hearing of
  every proceeding including--
  (a) The hearing of every
  appeal and every  cross-appeal; and
  [(b) The hearing of every
  interlocutory application.]
  8. Setting down for hearing      40.00
  an undefended demand for an
  unliquidated amount
  9. Sealing the original copy     30.00
  of any document  Provided that no sealing fee
  shall be payable in respect
  of any order made in anIP/Q4/NZL/1
Page 28
  interlocutory proceeding,
  other than an order made on
  a summary judgment
  application.
  10. Attendance before            300.00
  Registrar in inquiry or
  reference or examination of
  witnesses by Registrar under
  an order of the Court
  11. Filing application for       70.00
  an attachment order
  12. Filing application under     70 00
  section 84B of the District
  Courts Act 1947 for an
  examination of judgment  debtor
  13. Filing application for       50.00
  warrant of distress or
  warrant for recovery of  specific chattels or warrant
  for recovery of land
  14. Filing, pursuant to rule     130.00
  378 of the District Courts  Rules 1992*, notice of
  desire to take evidence of
  witness otherwise than at
  the time and place appointed
  for the hearing of the  proceeding
  15. Filing, pursuant to rule     120.00
  566 of the District Courts
  Rules 1992*, application for
  examination of party, for
  each party
*S.R. 1992/109  16. Application for charging     70.00
  order nisi or charging order  absolute
  17. Filing affidavit in          95.00
  support of garnishee summons
  18. Issue of certificate of      25.00
  judgment or orderIP/Q4/NZL/1
Page 29
  19. For search in any Court      15.00
  book or of any documents
  20. Copy of any document,        4.00
  other than a document
  specified in item 21 of this  Schedule, per page
  21. Copy of notes of
  District Court Judge or
  Registrar, or of any
  Judgment or order (other
  than a copy supplied to a  party to the proceeding):
  (a) Not exceeding 5 pages        12.00
  (b) Exceeding 5 pages but        25.00
  not exceeding 50 pages
  (c) Exceeding 50 pages but       35.00  not exceeding 75 pages
  (d) Exceeding 75 pages           45.00
  22. For the transmission of
  documents at the request of  a party, by the use of a
  facsimile machine (other
  than a transmission required
  for operational reasons),
  $2.00 plus, per page  transmitted, $1.00.
  23. For expenses of
  execution of any warrant of
  committal or writ of arrest:  The actual expenses incurred
  by the bailiff or constable,
  including the costs of
  conveyance and lodging in
  prison of the person
  arrested.
  24. For storage, cartage,
  and removal of goods, or
  advertising of goods for
  sale: Actual and reasonable
  disbursements.
  25. For each person left in
  possession of any premises:
  Fees, allowances, and
  expenses as allowed to a  witness in accordance with
  the Witnesses and
  Interpreters FeesIP/Q4/NZL/1
Page 30
  Regulations 1974*.
*S.R. 1974/124
Amendment No. 1: (Revoked by S.R. 1984/268)
Amendment No. 2: (Revoked by S.R. 1987/193)
Amendment No. 3: (Revoked by S.R. 1987/193)Amendment No. 4: (Revoked by S.R. 1988/147)
Amendment No. 5: S.R. 1988/147IP/Q4/NZL/1
Page 31
SCHEDULE
FEES PAYABLE IN RESPECT OF PROCEEDINGS IN THE HIGH COURT
                                                                         NZ $
1. Filing (including sealing where necessary) the original
   document commencing any proceeding (other than an
   interlocutory proceeding) to which these regulations
   apply, unless otherwise provided for                         100.00
     For the purposes of this paragraph the original
   document commencing any proceeding is,--     (a) In the case of a proceeding commenced by
         statement of claim, including an [application
         to put a company into liquidation], the statement
         of claim; and
     (b) In the case of an appeal or cross-appeal, the         notice of appeal or other document by which the
         appeal or cross-appeal is instituted; and
     (c) In every other case (including a proceeding to
         which Part IV or Part IVA of the High Court Rules
         applies), the first document (other than a caveat         or a notice of motion for directions as to service)
         filed in the proceedings by the plaintiff which
         gives to the Court and to the opposite party
         (if any) particulars of the claim made or of the
         order or other relief sought by the plaintiff.
2. Filing an interlocutory application--
     (a) In the case of an interlocutory application for an
         interim injunction                                     140.00
     (b) In every other case (including an interlocutory         application for summary judgment)                       80.00
3. Filing--
     (a) Statement of defence; or
     (b) Amended statement of defence; or
     (c) Counterclaim; or
     (d) Statement of defence and counterclaim where both         are included in the one document; or
     (e) Amended statement of claim; or
     (f) Appearance                                              55.00
4. Filing, under rule 141 of the High Court Rules, the first
   affidavit filed by a party in answer to an affidavit filed
   in support of an interlocutory application for summary
   judgment                                                      80.00
5. Setting down proceedings (other than interlocutory
   proceedings or an appeal or cross-appeal) for hearing        530.00
6. Setting down appeal or cross-appeal for hearing              425.00IP/Q4/NZL/1
Page 32
7. Hearing fee for each half day or part thereof
   after the first day                                          245.00
      This paragraph applies, unless otherwise provided, in
   respect of the hearing of every proceeding including--
     (a) The hearing of every appeal and every cross-appeal;         and
     (b) The hearing of every interlocutory application
         (other than interlocutory application for summary
         judgment in respect of which an affidavit in
         answer has been filed).
8. Hearing an interlocutory application for summary judgment
   in respect of which an affidavit in answer has been filed
   (fee for each half day or part thereof after the first half
   day)                                                         245.00
9. Sealing the original copy of any judgment, order, rule,
   memorial, certificate, commission, letters of request,
   or judgment not otherwise provided for                        30.00
     Provided that no sealing fee shall be payable in
   respect of--
     (a) Any order made in interlocutory proceedings; or     (b) Any probate or letters of administration; or
     (c) Any order for admission as a barrister and solicitor.
10. Issue of certified copy of any document or any Registrar's
    certificate                                                  30.00
11. Filing any application for admission as a barrister and
    solicitor                                                   270.00
12. Filing any application for probate or letters of
    administration                                               80.00
      Where a fee is paid under this paragraph, no fee
    shall be payable in respect of any application for
    leave to swear death in respect of the testator or
    other person in respect of whom the grant of
    administration is sought.
13. Sealing exemplifications or duplicates (probate or
    letters of administration) or resealing pursuant to
    section 71 of the Administration Act 1969                    25.00
14. Filing any notice of appeal against a decision of a
    Land Valuation Tribunal                                     315.00
15. Filing any notice of appeal under section 148 of the
    Law Practitioners Act 1982                                  330.00
16. Attendance before Registrar in inquiry or reference,
    or examination of witnesses by Registrar under order
    of the Court                                                330.00IP/Q4/NZL/1
Page 33
17. Copy of judgment (other than copy supplied to a party
    to the proceedings),--
      (a) Not exceeding 5 pages                                  12.00
      (b) Exceeding 5 pages but not exceeding 50 pages           25.00
      (c) Exceeding 50 pages but not exceeding 75 pages          35.00
      (d) Exceeding 75 pages                                     45.00
18. For the transmission of documents at the request of a
    party, by the use of a facsimile machine (other than a
    transmission required for operational reasons), $2.00 plus,
    per page transmitted, $1.00.
19. Copy of any document, other than a judgment, per page         4.0020. Search of Court records (including a search relating to
    one or more files)--for each search                          20.00
21. Search of any register or file that relates to an
    application for a grant of administration under the
    Administration Act 1969 or any corresponding former
    Act or to proceedings for the recall of any such
    grant--for each file searched                                35.00
      The fee payable under this paragraph in respect of    any file includes the cost of obtaining a copy of any
    document on that file.
22. Appointment of Commissioner to take affidavits
__________