Protecting the Material World

21 October 2016

Season after season, upmarket designers produce runway looks which are then swiftly replicated and manufactured by more affordable chain stores. This practice – known as fast fashion – fuels the global fashion industry. But while some participants in this copycat economy simply draw inspiration from current styles and trends, there are others who push the boundaries by copying designs outright.

Copied designs can be attractive to consumers who would be reluctant, for instance, to pay $700 for a Self-Portrait dress when they could simply purchase a ‘Self-Portrait style dress’ from for around $30. But for the fashion industry as a whole, these cheap knock-offs can tarnish the exclusivity and desirability of leading brands and take money out of the hands of the talented designers who created the dress in the first place.

This is why Intellectual Property (IP) laws are a critical part of the multibillion-dollar fashion industry. These laws strive to protect the interests of designers, without going so far as to stifle healthy competition. That said, designers still face a number of obstacles when it comes to defending their IP. There is time and cost involved with pursuing infringers every season, as well as reputational issues, including opening themselves up to attacks on social media for ‘bullying’ smaller players.


Copyright is an unregistered IP right which protects original creative works, including clothing designs, for up to 16, or even 25 years, depending on the particular article.

Last year, the New Zealand Court of Appeal upheld a claim by G-Star RAW that Jeanswest had infringed the copyright in their 5602 Elwood Jean. While Jeanswest only made $325 profit from selling its version of the jeans, the Court awarded G Star $50,000 in damages, plus interest and legal fees.

Drawings of the Elwood “Biker” Jean by G-STAR RAW (left) and the Jeanswest “Dean Biker” Jean (right) as used in the G-Star RAW case.

Drawings of the Elwood “Biker” Jean by G-STAR RAW (left) and the Jeanswest “Dean Biker” Jean (right) as used in the G-Star RAW case.

Registered Designs

A registered design can protect the external appearance of a manufactured article for a specified period of time, as long as it is new or original. While it may be impractical and costly for a designer to register every style they produce, a registered design might give valuable exclusivity to special cuts that will feature over a number of seasons, but in different colourways or fabrics. The catch is that the design application must be filed with the Intellectual Property Office before the garment is “published” to the world, so designers are well-advised to plan in advance.

Across the ditch, high profile designer Toni Maticevski recently announced on Instagram that his unique ruffle styles are now protected by Australian Design Registrations. It will be interesting to see if more Australasian designers with stand-out styles will follow suit.

Toni Maticevski

Extracts of Toni Maticevski’s Designs from the Official Australian Design Register

Registered Trade Marks

It is vital for designers to protect their brand names and logos. Consumers rely on branding to differentiate the products and services of one designer from another. They are loyal to brands they enjoy and have grown to trust.

Some designers will go to great lengths to protect their branding from unauthorised use, and rightly so. The exclusivity of designer brands is part of the reason why fashion houses like Chanel can command luxury prices year after year.

Registered trade marks are an especially valuable tool to counteract domain name squatters and similarly-named rivals. Infamous trade mark disputes involving New Zealand designers include RUBY vs Rubi Shoes, and Trelise Cooper vs Tamsin Cooper.

Extract from the New Zealand Trade Mark Register of a Swanndri Trade Mark which was applied for in 1913 and is still registered to this day.

Extract from the New Zealand Trade Mark Register of a Swanndri Trade Mark which was applied for in 1913 and is still registered to this day.

If designers are to thrive in the cut-throat world of the fashion industry, they need to understand how far they can go in looking for inspiration from other designers, as well as how they can safeguard their own livelihood from copycats. Consumers should also be mindful of the creative efforts which have gone into their favourite designs. While that $30 ‘Self Portrait style dress’ may seem tempting, it is this type of mind-set which is derailing the innovations of the fashion world.

Disclaimer: This article is intended to provide general information relating to New Zealand only, and is not legal advice. You should seek advice from your IP professional if you require advice particular to your situation.

Why and how your client should protect their branding

Brands and trade marks are powerful business assets. As consumers, we rely on branding to differentiate the products and services of one trader from another. We familiarise ourselves with the brands we use, and are loyal to brands we enjoy and have grown to trust.

No client wants the exclusivity and reputation of their branding to be undermined by a competitor. Clients should therefore seek timely expert advice in order to protect their trade marks. If a trade mark is protected at the right time and in a correct manner, the playing field can be levelled between individual traders, SMEs and corporations. Competition becomes less about “David v Goliath” and more about even competition among brand identities.

Let’s consider the hypothetical case of a client, Ace Corp Limited, who wants to set up a new venture. This case example is not a substitute for advice, and is instead a brief overview of some of the issues which should be considered by lawyers and their clients.

Ace Corp’s brand is born

When setting up a new venture, Ace Corp will probably have in mind a trade mark or two to be used on its product or to promote its services. Ace Corp’s trade mark might be in the form of a logo, a word, a shape or a colour, or a combination of various features.

Due diligence

In an ideal world, Ace Corp would first consult its intellectual property professional who can search the applicable registers and the online marketplace in Ace Corp’s key markets. The IP professional could then advise on the availability of the proposed trade mark(s) in terms of both:

whether the trade mark is capable of registration and therefore exclusive ownership; and
whether there is a risk the trade mark will infringe upon the rights of another trader.
The fact that Ace Corp may own the copyright in its brand does not remove the risk of trade mark infringement proceedings. An original logo which attracts copyright protection may still be attacked on the basis that it is too similar to a competitor’s mark used in respect of similar goods or services.

If Ace Corp does not instruct an IP professional to conduct relevant searches, and is not aware of the risks its choice of trade mark may pose, Ace Corp may find itself in a dispute with another party over the trade mark.

In a worst case scenario, Ace Corp might have to defend legal proceedings for trade mark infringement and potentially be exposed to damages. Even if this can be avoided, Ace Corp may have to re-brand. Re-branding can have significant consequences for a newly established business, adversely affecting growth and brand recognition.

Application process

Let’s assume Ace Corp’s IP professionals have analysed the search results and concluded that the trade mark is free to use. Ace Corp can then consult the IP professional to develop a filing strategy so that it can apply to register the trade mark in the countries in which it intends to trade, over a specified period of time.

The nature of the trade mark laws in the countries must be considered too. Certain countries such as China should be considered early on, given that it is difficult to battle trade mark squatters who take advantage of the reputation of overseas businesses. Further, depending on the countries where coverage is sought, Ace Corp may be able to delay filings for up to six months while being able to claim the filing date of the first trade mark application made worldwide.

The search may also have alerted Ace Corp to potential obstacles to the registration of its trade mark. Many applicants give up when a hurdle to registration is raised, but there may be strategies to overcome obstacles. If there is a trade mark which Ace Corp is dead set on using, or in which it has already invested significant resources, as part of the filing strategy Ace Corp’s IP professional can help manage these obstacles in a cost-effective way.

There are many benefits once Ace Corp’s trade mark application matures to registration. The presence of the trade mark on the register will serve as a warning to other traders who may be contemplating whether to adopt an identical or similar trade mark. Further, if a trade mark dispute arises it is usually easier and more cost-effective for Ace Corp to rely on its registered rights than it would be to rely on fair trading provisions and common law rights, including the tort of passing off.

Importantly, clients should note that a trade mark registration owned by a small local player can be used to hold at bay much larger companies who seek to enter the same market.


Ace Corp must carefully consider who should own the trade mark application. As with any asset, the implications of differing ownership structures must be fully thought out. It is common for a director to file a trade mark application in their own name, or for the wrong company to be inserted as owner of the trade mark, which may have adverse consequences down the line.

For example, during a merger or sale of a business, a company’s assets may be liquidated and the company dissolved. If the trade mark registration is not transferred at the right time, the registration will be deemed vested in the Crown, pursuant to the doctrine of bona vacantia, or “ownerless” property. If this is not addressed promptly, it may be a difficult process to claw back the registration.

Alternatively, if a trade mark has been filed in the name of an individual who is now deceased, the vesting of the mark in the individual’s estate may have unexpected consequences for the business, unless this was deliberate.

Importantly, the value of a registered trade mark is easier to conceptualise and quantify than that of an unregistered mark. This means that a registered mark can easily be identified in business agreements, including for the sale and purchase of a business, the assignment of property, distributorship and licensing. A trade mark registration may also need to be valued for taxation purposes, or it could form a registrable security under the Personal Property Securities Act 1999.

Domain name protection

As well as registering Ace Corp’s trade mark, it is wise to secure domain name protection. As the owner of a registered trade mark, Ace Corp has the right to own the corresponding domain name, unless another trader in a different industry who owns an identical trade mark registration has already secured the domain name. Ace Corp may also wish to purchase adult-themed domains, such as .xxx and .adult, or the controversial .sucks domain, in order to prevent others from purchasing these domains and tarnishing the reputation of its brand.

Growth of Ace Corp’s business

Registering a trade mark is not the end. Ace Corp and its lawyers must continue to consider the importance of trade mark registrations as the business enters different phases of development.

As part of this growth, Ace Corp might update its branding. Ace Corp could introduce a new style, colour or other additional features to its core trade mark. At this stage it is important to consult an IP professional to assess whether the trade mark protection already in place is enough, or if additional steps are required to secure protection for the revised branding.

Otherwise, Ace Corp may later find its trade marks are not properly protected, and it may be too late to secure exclusivity in the market if another trader has built up a reputation in similar branding for similar goods or services in the meantime.

How trade mark registration provides protection

For most businesses, branding is a valuable part of commercial practice. The scope of any trade mark registrations Ace Corp owns must therefore provide solid practical protection for its business activities, and should be future-proofed where possible.

When preparing an application for a trade mark registration it is important to consider how the trade mark is to be represented on the register. For instance, Ace Corp’s trade mark could be a word used in conjunction with a label that varies as to the quality of the product, or it could be a logo moulded into a particular point on a beverage bottle. In both cases, care and expertise is required so that the application best represents the trade mark in question.

A trade mark application can cover up to 45 classes of goods and services. Each of these classes are then broken down into further detail; often referred to as the specification. Specification drafting is an art. It is important that the trade mark specification covers Ace Corp’s proposed activities without being so narrow as to allow other traders to use similar branding on similar goods or services. Equally, the specification should not be so broad that Ace Corp’s application is frustrated by unnecessary obstacles, or later becomes vulnerable to removal on the basis of non-use.

It should also be reiterated that a business in an entirely different industry may be able to use the same brand as Ace Corp if there is no cause for confusion. There may, however, be grounds to take action if Ace Corp’s trade mark ultimately becomes a well-known or famous trade mark.

In conclusion

Branding is a very powerful asset and can make or break a business. It is important that a client’s trade marks are sufficiently protected, appropriately valued, and recognised in commercial transactions. Clients must undertake due diligence at the outset and as their business grows, in order to reap the benefits of owning a successful brand.

This article was first published in LawTalk, Issue 894, 11 August 2016.

The Silver Fern Flag & Related Intellectual Property Issues

A country’s flag is a distinctive symbol of the country it represents, much like a trade mark is a badge of origin for a business. The future of our national symbol is up for debate, and on 20 November 2015 we will be given the opportunity to pick our preferred alternatives to the current flag design via the Government-led Flag Consideration Project.

This article discusses how one of the shortlisted designs, Alofi Kanter’s Silver Fern (the Kanter Flag), raises issues from an intellectual property (IP) perspective.

The Kanter Flag:

 The Kanter Flag

The credit for the design in the Kanter Flag is attributed to The New Zealand Way Limited (NZWL), which is the proprietor of the following registered New Zealand trade mark which covers a wide array of goods (the NZWL Silver Fern Trade Mark):

NZWL Silver Fern

History of the NZWL Silver Fern Trade Mark

NZWL is owned by the government, its shareholders being New Zealand Trade and Enterprise (NZTE) and the NZ Tourism Board. Operating through the New Zealand Story Group (NZSG), NZWL’s purpose is to provide and manage an online library of images and recordings.

The NZWL Silver Fern Trade Mark is entitled to be used by two different groups, the first being government-owned entities including NZTE, Tourism New Zealand, Qualmark and Air New Zealand. New Zealanders may recognize the NZWL Silver Fern Trade Mark on Air New Zealand’s fleet, or even from the 2003 America’s Cup Yacht.

The second group is made up of New Zealand private businesses which meet the strict criteria relating predominantly to their good character and repute, and their New Zealand made products. These business are all exporters.

Rules Around the new Flag Design

Under the Flag Design Terms and Conditions of the Flag Consideration Project, the intellectual property and moral rights in the shortlisted designs have been assigned to the Crown. If the public votes to keep the current flag, the Crown will still retain those rights to the shortlisted designs unless the designer of any part of that flag requests that the rights are re-assigned back to them.

If one of the shortlisted designs is the ultimate winner, New Zealand individuals and organisations will, as has always been the case, be able to use that design in advertising or for commercial purposes in New Zealand and abroad, in accordance with the rules and protocols established by the Ministry for Culture and Heritage. The Ministry notes that individuals seeking to do so should contact the Ministry to discuss their ideas first.

It should also be noted that there is no provision in the Flags, Emblems, and Names Protection Act 1981 which expressly prohibits the use of the New Zealand Flag (although it is an offence to destroy, damage or alter the Flag in any way).

Implications for the NZWL and users of its Silver Fern Trade Mark if the Kanter Flag wins

The rules discussed above put the existing users of the NZWL Silver Fern Trade Mark in an interesting predicament. These users’ rights are very likely to be compromised, given that the NZWL no longer retains ownership and control over the intellectual property rights in the design.

NZWL’s attitude toward the use of their trade mark as a candidate for the new New Zealand flag is in direct contrast with the stance taken by the New Zealand Rugby Union (NZRU). The NZRU declined to approve their silver fern trade mark for use during the design submissions process. Undoubtedly, it would have been undesirable for the NZRU to assign or authorise the use of its trade mark in a way that diminished the commercial value of the mark or interfered with the rights of the existing authorised licensees from whom the NZRU leverages income.


If the Kanter Flag is the ultimate winner, it is likely to pose a puzzling predicament for the existing users of the NZWL Silver Fern Trade Mark. We will be following the after-math of the flag referenda with great interest.

Rugby World Cup 2015 Etiquette: What Your Business Needs to Know

With the opening ceremony for the Rugby World Cup (RWC) kicking off tomorrow in London at 6am NZST, it is safe to say that RWC fever has officially hit home. Businesses may recall that when New Zealand hosted the tournament in 2011, there were stringent guidelines via the Major Events Management Act around how and when traders could market goods and services which made reference to the RWC or the All Blacks. While the 2015 tournament is based in England, this does not mean that NZ businesses can get carried away in showing their support for the RWC. They still need to consider the potential risk of infringing the intellectual property rights of the owners of the RWC and ALL BLACKS brands.

Trade Marks

The Irish company, Rugby World Cup Limited (RWCL), is the owner of an impressive portfolio of registered trade marks in both New Zealand and internationally, in respect of the RWC brand. Marks on the New Zealand register include ‘RUGBY WORLD CUP’, ‘RWC’ and the logo:


The registrations cover a vast array of goods and services, including sporting activities, rugby balls, clothing, and even stationery and household utensils.

New Zealand Rugby Union Incorporated (NZRU) is an incorporated society which is the owner of multiple registrations in both New Zealand and internationally. Marks on the New Zealand register include ‘ALL BLACKS’ and the logo:


These marks are registered for a variety of goods and services, including sporting activities and clothing.

The trade marks of both the RWCL and the NZRU are well known and businesses should be wary of using these trade marks in association with their own goods and services, so as not to mislead or deceive consumers into thinking that their goods are in some way associated with the RWC or the All Blacks. If this is the case, they may be liable for trade mark infringement.

New Zealand is no stranger to trade mark issues when it comes to Rugby. In 2011, Giltrap Audi was told by the NZRU during the world cup season to remove a large sign with the lettering “Go the All Blacks”. The sign was replaced with “Go the ABs”, at significant cost to Giltrap Audi. More recently, it was reported that the launch of a black burger bun by fast food chain Wendy’s became the subject of discussions between the burger chain and a “certain sports team” over whether the burger had the potential to infringe trade marks associated with that team.

In both cases, Giltrap Audi and Wendy’s were far from pleased. The chairman of Giltrap Audi described his experience with the NZRU as “bloody ridiculous”, saying he had “never heard anything so stupid in my life”. CEO of Wendy’s NZ Danielle Lendich said that the discussions around the burger “highlights the ridiculous debate that can happen around certain words and events”.

On the other hand, it is important to keep in mind that trade mark owners have often expended a considerable amount of time and resources to protect their branding. If brand owners were to acquiesce to or tolerate unauthorized uses of their trade marks, their ability to defend their trade marks against future breaches may be diminished in the eyes of the law. In the sporting context, businesses often pay large sums to become sponsors of teams and tournaments; they would have no incentive to do so if their competitors were also associating themselves with those teams and tournaments, devaluing the association which the sponsor would have otherwise received.


Copyright protects artistic and literary works, such as logos, shirt designs, and publications from unauthorised use. New Zealand businesses should be careful not to reproduce material associated with the RWC or other sports teams as these materials may be protected by copyright. As New Zealand and the United Kingdom are parties to the Berne Convention, the rights of copyright authors in the UK are recognized by the NZ courts. Copyright infringement can occur if a ‘substantial part’ of a work is copied.

Fair Trading & Passing Off

Businesses should also consider their obligations under the Fair Trading Act so not to mislead or deceive consumers in trade. Section 13 of the Act prohibits conduct which constitutes a false or misleading representation that a person has any sponsorship, approval, endorsement or affiliation.

The tort of passing off may also apply if as a result of misleading or deceptive conduct, a trader suffers damage to their goodwill.


As with any major sporting event, there are bound to be a number of intellectual property disputes regarding the RWC in New Zealand and worldwide. In addition to the rugby, we will be following this topic with close interest over the course of the tournament.

Go the ABs!