Unregistered Rights

Protection without the need for registration is afforded in New Zealand in a number of manners.

Copyright protection may be obtained for artistic works without the need for registration. Copyright also subsists in three-dimensional and industrial works though excludes function, which if novel and non-obvious is the domain of patents. Articles (but not literary works) may be made the subject of design registration, which may be considered as a ‘registered’ form of copyright in New Zealand.

There are a number of advantages associated with design registration, rather than a reliance solely upon copyright. Enforcement of copyright depends on establishing that copying occurred, which presents the often difficult task of establishing a link between the original article allegedly copied and how the alleged infringer had the means and opportunity to copy to produce a product which is considered close enough to infringe. There is considerable burden and difficulty on the person initiating the copyright action to produce this evidence. In contrast, in cases of infringement of a registered design, whether copying occurred is largely irrelevant with the focus being upon the similarity of design between the articles in question.

As copyright (where it applies) is automatic in New Zealand upon creation of the work, it is often relied upon to protect variations of designs which may have been registered, and supplementary to patent protection. It is often relied upon in instances where, for one reason or another, registered design protection was not sought. As a consideration in the awarding of damages by the Court in copyright infringement proceedings, copyright owners are recommended to mark or identify the existence of copyright subsisting in works and articles through the following warning "© author/owner date/year".

Copyright can also protect the moral rights of a copyright owner, which includes a right to object to the derogatory treatment of a work, and to the false attribution of an author or director.

Common law rights also provide protection for use of trade marks. As for copyright, the burden of evidence on a trade mark owner in bringing a passing off action (relying on their common law rights in a mark) is high and includes factors such as establishing the extent and area of reputation in the mark, that confusion has occurred, and that loss has resulted. Some of this evidence may be difficult to gather, or involve sensitive material (such as financial records establishing extent of loss attributable to passing off). In contrast, registration of the mark where possible, bypasses these issues and focusses on the similarity of the marks.

The extent of any common law rights in a trade mark is proportional to the extent of reputation. Common law rights are also territorial, and thus strong reputation (and common law rights) in one part of the country will afford little or no rights in another area where no reputation exists. Consequently trade mark registration is recommended, and sole reliance on common law rights consigned to cases where trade marks are considered unregistrable and the applicant does not wish to abandon their continuing use of the mark.

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