Khushbu Sundarji, Partner at Stewart Germann Law Office continues her series on intellectual property protection. This article discusses other ways to protect intellectual property in New Zealand. Follow the series here.
Registered Designs
Registered Design protection pursuant to the Designs Act 1953 is available for a wide range of products. Protection may be obtained for novel features of shape, configuration, pattern or ornament applied to an article by an industrial process. The features protected by a registered design must appeal to and be judged by the eye such as design on China and cutlery.
It is possible to obtain a preliminary search in the Designs section on the Intellectual Property Office of New Zealand website and this search can provide advice as to whether or not the proposed design is likely to infringe an existing registered design and/or whether it is in fact registrable.
Confidential information
There are many items that would be considered confidential information and also a part of a franchisor’s intellectual property. Confidential information is one – so trade secrets (some written, could also be covered by copyright), know how etc.
Patents
You can obtain patent protection under the Patents Act 2013. In broad terms, patent protection may be obtained for inventions (ideas) which are novel, involve an ‘inventive step and be useful. An inventive step is a non-obvious improvement over known technologies.
Patent rights are granted by statute and the system operates as a reward for technical innovation by granting exclusive monopoly rights for a defined period.
In order to obtain a valid patent, the invention must be new. An invention should not have been used, sold, published or otherwise known in New Zealand by the applicant or any third party prior to the date of application.
Patents have also been subject to various cases alleging infringement such as:
- In 2010 Apple took Samsung to court alleging Samsung violated Apple’s patents on several of its smartphone designs.
- Motorola has sued Apple alleging infringements of Motorola’s patents on 3G phone technology and other aspects of smartphone designs. Apple argued that Motorola had infringed someo of their patents as well. The cases are ongoing.
Conclusion
At the outset, franchisors must identify the key aspects of their intellectual property and where possible (trade mark, copyright, registered design or patent) register their intellectual property, in order to establish their rights and ensure that third parties cannot use their brand.
This article is written by Khushbu Sundarji. If you have any questions, please contact SGL.
Khushbu is admitted as a Barrister and Solicitor in Auckland in 2010 and was admitted as a Barrister and Solicitor in Melbourne in 2011. She is experienced in the sale and purchase of property, sale and purchase of businesses and also has expertise in franchising and licensing and drafting commercial contracts. Khushbu worked in Melbourne prior to joining SGL in 2017.
Khushbu can be found on LinkedIn.
