By Julie Ballance

This article was also published in Trademark October/November 2001 and is reproduced on the FindLaw website courtesy of Trade New Zealand

The term "intellectual property" is one that seems to appear frequently in the media these days. But what exactly is "intellectual property" and what do exporters need to know about it?

Some intellectual property rights must be applied for and registered before they come into existence, while others do not. The opportunity to obtain some registered rights can be lost if legislative requirements are not met. Some of the "do's" and "don'ts" to avoid losing these rights are explained below.

REGISTERED RIGHTS

These include
1. patents;
2. registered designs; and
3. registered trade marks.

1. Patents
Patents may be obtained for a wide range of inventions, including methods and processes, machinery and other apparatus, and a wide range of products.
To obtain a patent, three basic criteria must be met:

1. the invention must be new;
2. the invention must show inventive step; and
3. the invention must be useful.

A pitfall that still catches many by surprise is the requirement for obtaining patent protection that an invention must be new. Many business people who come up with innovative ideas jeopardise the possibility of obtaining patent protection by telling others of the idea and even making sales, prior to investigating options for obtaining patent protection. Any non-confidential disclosure of the invention prior to filing a patent application can invalidate the patent protection. Depending on the nature of the disclosure, patent rights can be jeopardised or even lost, not only in New Zealand but also overseas.

2. Registered Designs

Registered Designs may be obtained for articles that have new features of shape, configuration, pattern or ornament. Design registrations may be obtained for a wide range of articles from furniture and household wares to textiles and machines.

As with patents, a design must be new, in order to be validly registered. Any non-confidential disclosure prior to filing a design application will jeopardise the design rights, not only in New Zealand but possibly in other countries as well.

In New Zealand, there is some overlap in the protection provided by a design registration and that provided under the Copyright Act 1994. However, the laws in other countries can be quite different and often catch exporters out. In particular, the registered design and copyright laws in Australia are quite different from those in New Zealand.

3. Registered Trade Marks

Trade mark registrations may be obtained for an increasingly wide variety of trade marks. In New Zealand, trade marks can be registered for words, logos and labels, as well as sounds, smells, and 3-dimensional shapes.

Unlike patents and design registrations, there is no requirement to register a trade mark before you start using it, and in most countries there is no strict requirement to register a trade mark at all. Trade mark rights can accrue through use.

Having said that, there are a number of distinct advantages in registering a trade mark both in New Zealand and elsewhere.

One of these advantages relates to the "priority" your trade mark registration will give you. Germany is an example of a country that is moving toward a "first to register" system. If you make use of an unregistered trade mark in Germany and another trader subsequently registers the same or a similar trade mark, your chances of successfully challenging the subsequent registration and preventing use of the trade mark by the other trader are quite limited (not to mention expensive).

Another advantage with a trade mark registration is the ability to use the ® symbol.

POINTS TO REMEMBER