CONTENTS
Preface	1
1. Introduction	3
2. Trade Marks and brand protection	5
Introduction	5
What is a trade mark?	5
Registered versus unregistered trade marks	6
The registration process	7
The distinctiveness threshold for registered trade mark protection	7
Inherent distinctiveness	8
Acquired distinctiveness	8
Distinctiveness and prior conflicting marks	9
Trade mark opposition and revocation applications	9
Opposition	9
Revocation and invalidity	10
Trade mark infringement, passing off and Fair Trading Act claims	11
Trade mark infringement based on actual or presumed confusion	11
Assessing confusion	12
Trade mark infringement by dilution	13
Defences to trade mark infringement	14
Remedies for trade mark infringement	15
3. The Copyright Monopoly	17
What is copyright?	17
Prerequisites for copyright subsistence	17
Qualification	17
Originality	18
How long does copyright last for?	18
Originality and the “idea/expression dichotomy”	21
Ownership and exploitation of copyright	21
Copyright infringement	22
So what amounts to infringement?	23
Primary infringement	23
Unconscious copying	24
Indirect copyright infringement	24
“Substantial taking” required for infringement	25
“Fair dealing” and other defences to copyright infringement	25
Remedies for copyright infringement	26
4. Registered Designs	29
Introduction to registered designs	29
New or original	29
Functionality	29
Examination of registered designs/revocation	30
Overseas design applications	31
Rights granted by design registration	31
Interface with Copyright Act	31
5. Patents	33
Introduction	33
What is a patent?	33
Why apply for a patent?	34
Patent law – the sources	35
What is patentable?	36
Who can apply for a patent?	39
The patent application process	39
The patent examination process	41
New Zealand patent application process	42
Patent Cooperation Treaty (PCT) application process	43
Challenging a patent	44
Opposition to grant/revocation by the Commissioner	44
Standing in opposition proceedings	45
Revocation by the court	46
Standing to seek revocation	46
Revocation under the draft Patents Bill	46
Principle grounds of opposition/revocation	47
Prior publication/not new on the basis of what is known	47
Prior use	47
Obviousness	48
What documents are relevant in assessing obviousness?	48
Common general knowledge/skilled addressee	49
In the result, is it obvious?	49
Other grounds of opposition/revocation	50
Patent infringement	50
Patent litigation	52
Remedies	52
Interim injunction	52
Technical matters in patent litigation	53
Other matters	53
Amendment	53
Invention by importation	54
Solicitor General	54
Tying clauses	54
Groundless threats	54
Declaration of non infringement	54
6. Confidential information	55
Information as property?	55
The information must be confidential (the first element)	55
Received in circumstances which are “confidential” (the second element)	57
Confidential information and employment	57
Unauthorised use (the third element)	60
Are third parties bound?	60
How long does the duty last?	61
Remedies and defences	61
Criminal liability for trade secret theft	62
7. Domain Names	63
Introduction	63
NZDRS process - overview	63
Grounds for complaint	63
Rights to a name	64
Registration is unfair	64
Decisions	64
Observation	65
8. Commercial Issues: Making money from creation and innovation	67
Selling and licensing IP: options, issues and pitfalls	67
Documenting and recording IP transfers	67
Common licensing terms and issues: patents	68
Common licensing terms and isses: copyright	69
Common licensing terms and issues: trade marks and designs	71
IP due diligence	71
Security interests in IP	73
IP and taxation issues	73
Index of cases	75