Anyone with a copyright work or registered trade mark can file notices with the New Zealand Customs Service (Customs) so that Customs can stop infringing items featuring your intellectual property rights at New Zealand's border (Border Protection Notice). This can be a useful and effective tool in the anti-counterfeit toolbox.
Customs' Border Protection Notice pricing practices have varied in recent years, with Parliament also considering how best to manage these costs. The result is that Customs will re-introduce the requirement that businesses indemnify it for costs incurred in detaining, inspecting and determining if items infringe their Border Protection Notices from 1 July 2021. The indemnity is permitted by the Trade Marks Act 2002 and Copyright Act 1994. Customs' rates are also increasing.
Those who held Border Protection Notices before June 2020 may remember that businesses used to provide an upfront NZ$5,000 security bond to Customs, which was used as an indemnity for the costs described above. This bond is not coming back. Instead, businesses can expect that Customs may begin recovering costs directly from them for things like storing and/or disposing of counterfeit goods and legal proceedings directly from them. These charges may be larger than experienced previously and businesses will also need to be conscious of allocating resourcing as they no longer have a bond ready for use by Customs.
This article is intended only to provide a summary of the subject covered. It does not purport to be comprehensive or to provide legal advice. No person should act in reliance on any statement contained in this publication without first obtaining specific professional advice. If you require any advice or further information on the subject matter of this newsletter, please contact the partner/solicitor in the firm who normally advises you, or alternatively contact one of the partners listed below.