The New Zealand Customs Service ("Customs") runs a very
effective border surveillance system using what are called Customs
Notices. Customs is only able to take action against counterfeit or
infringing goods if the relevant Notices are in place.
Currently the Customs Notice system is available for use with
trade marks or copyright works. A trade mark notice can be lodged
in respect of a registered New Zealand trade mark. A copyright
notice can be filed for works in which copyright subsists (see our
"Copyright FAQ" for more information on this).
Once a Notice is lodged, Customs will inspect shipments randomly
for infringing goods, and will detain any goods it suspects of
infringing the relevant trade mark and/or copyright work. If
necessary, it will confirm with the trade mark/copyright owner
(usually by way of a digital photograph) that the goods are in fact
counterfeit before doing so.
No. The Customs Notice system in New Zealand is only available
for use with trade marks or copyright works.
Both Notices offer different protection. A trade mark notice
offers strong protection as it is based on a trade mark
registration and will usually prevent goods being imported if they
carry the same trade mark regardless of what it looks like. However
they are limited to particular classes (or categories of goods and
may not capture everything the mark has been applied to). A
copyright notice is not limited to one class of goods. However the
Notice will only stop goods which look the same as those protected
by the copyright notice.
Not necessarily. Many rights-holders choose to lodge both trade
mark and copyright notices for their logos as the logo will usually
be protected as an artistic copyright work.
In order to file a trade mark notice or a copyright notice with
Customs, you will be required to submit various documents including
the Notice itself. In the case of a trade mark notice this will
include confirmation of the registration from the Intellectual
Property Office of New Zealand. For a copyright notice, you will
need a copy of the copyright work and various other details about
the copyright author and owner
There are no official fees for applying for a Notice. However
you will need to provide Customs with a signed security form that
indemnifies them for any loss incurred on your behalf (such as for
storage or transportation of infringing items) together with a
security payment of NZ$5,000. If you use a lawyer or patent
attorney to prepare and lodge the Notice for you most will charge a
fee.
We can lodge a Notice within a few days of receiving all the
information we require to lodge the notice and security of $5000
(see above).
The security of NZ$5,000 is held by Customs in an interest
bearing trust account and is refundable at the end of the Notice
period, less any costs incurred. The Customs Notice system has been
in place in New Zealand for over 10 years. As far as we are aware
Customs has never deducted any money from a security.
Once lodged, a trade mark notice is valid for five years, or
until the trade mark registration expires, whichever comes first.
With the copyright notices - again, the notice is valid for five
years, or until the copyright expires, whichever comes first.
Notices can be renewed for successive five year periods until the
copyright or trade mark registration expires.
See our "Enforcement of Customs Notices FAQ."
You can find out more by contacting our Litigation Team.