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FYI: Intellectual Property – Fashion Faux Pas - words of warning for the fashion forward

25 Aug 2014

As fashion’s faces gather in Auckland for Fashion Week 2014, Claire Foggo and Janelle Cooke from our IP team look at recent intellectual property disputes from New Zealand and abroad and their lessons for our fashionistas...

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FYI: Intellectual Property – Island time: Pacific Island trade marks get their day in the sun

22 Jul 2014

While popular holiday destinations like Fiji, Vanuatu and Samoa are some of our closest neighbours, New Zealand businesses have traditionally been reluctant to pursue trade mark protection in these jurisdictions...

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FYI: Intellectual Property – Tasman does enough to insulate its brand from genericide

25 Jun 2014

After a long time the decision in Tasman Insulation v Knauf has been released...

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FYI: Intellectual Property – Coke v Pepsi - What's all the fizz about?

01 Apr 2014

The rivalry between drinks brands Coke and Pepsi is the stuff of legend. The latest instalment of this litigated saga is the High Court decision that Frucor and PepsiCo were not infringing Coca Cola’s 3D shape trade mark for the familiar Coke bottle by using Pepsi’s recently minted Carolina bottle...

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FYI: Commercial Litigation/IP – Interim injunctions - the potential cost of winning the battle but losing the war

11 Feb 2014

One of the most effective litigation remedies is the interim injunction preserving the current status pending trial. Viewed as a first strike weapon, it can make or break a case...

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FYI: Intellectual Property – Whether you’ve been naughty or nice, here’s some IP news

13 Dec 2013

It is time to look back on another busy year in the intellectual property world as we head into the silly season. In this article, we report on some of the curious intellectual property issues that have arisen in 2013...

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INSIGHTS Videos: New Zealand's new Patents Act

03 Dec 2013

In this INSIGHTS video intellectual property experts Earl Gray and Richard Watts discuss the key changes...

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FYI: Intellectual Property – Denim Wars: raw lessons?

19 Nov 2013

63 pairs of jeans were the subject of the latest decision on copyright infringement from the New Zealand High Court...

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FYI: Intellectual Property – The new Patents Act: New Zealand’s patent regime dragged into the 21st century … mostly

03 Sep 2013

After decades of waiting, the new atents Act is almost here. The new Act will raise the bar for patents in New Zealand in a number of respects.

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FYI: Intellectual Property – New risk in the USA to New Zealand business secrets

18 Jul 2013

A case recently decided in the USA poses new risks to the confidential information of New Zealand companies looking to do business with companies in the United States...

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X-Tech: ezine – Creative Commons: You may use my work, but…

01 Jul 2013

Open source copyright licences have been used since at least the 1990s, but it is only in recent years that they have become a widely used method for creative collaboration. One of the most popular forms of open source copyright licences is Creative Commons licences...

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X-Tech: ezine – Re-sale of digital music could infringe copyright

01 Jul 2013

Selling and purchasing used music records, such as vinyl and compact discs, is something that many people are familiar with. However, the era of downloadable digital music has raised new issues about how users can deal with their purchased digital music files...

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FYI: Trade Marks – Hurdles on the CATWALK: Brand protection gets more challenging

25 Jun 2013

Under section 17(1)(a) of the Trade Marks Act 2002, an opponent in a trade mark opposition (who claims to have prior rights in a similar or identical trade mark) is required to establish "awareness" of the trade mark(s) it relies on...

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X-Tech: ezine – Pirates of Aotearoa

04 Apr 2013

The first decisions on any new area provide a platform from which the public can assess how the relevant law will be applied in future. The first New Zealand Copyright Tribunal decisions on the infringing file sharing provisions of the Copyright Act 1994 are no exception...

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FYI: Intellectual Property – IP scams, low ball schemes and unsolicited notes

28 Mar 2013

IP rights are the latest targets for scammers and low ball schemes. Have you received an unsolicited email or letter requesting payment in relation to your intellectual property rights? ...

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X-Tech: ezine – Technology by design

17 Dec 2012

Although copyright, patents and trade marks often first come to mind when mentioning "technology" and "intellectual property" together, registered designs can also add significant value to business's intellectual property portfolios for technological products...

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FYI: Intellectual Property – Santa’s Making a List…of IP News

11 Dec 2012

As we enter the Christmas season, it is time to reflect on a busy year in the intellectual property world...

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FYI: Intellectual Property – The Madrid Protocol: Countdown to 10 December 2012

05 Dec 2012

The Madrid Protocol comes into force in New Zealand on 10 December 2012. This will allow entities in other Madrid Protocol countries to file international trade mark registrations designating New Zealand as a country to which trade mark protection would extend...

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FYI: Intellectual Property – Trade mark regulation amendments: can you beat the fee increases?

23 Nov 2012

As a result of New Zealand's decision to implement various international trade mark agreements, it has amended its trade mark legislation and regulations to align with the requirements of the various agreements...

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FYI: Intellectual Property – Rights of Attribution for Ka Mate Haka

08 Nov 2012

The Ngāti Toa Rangatira iwi (Ngāti Toa) and the Crown initialled a Deed of Settlement (Deed) on 30 August 2012, intended to provide redress to Ngāti Toa for historical acts and omissions of the Crown in breach of the Treaty of Waitangi...

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FYI: Intellectual Property – Was that a misrepresentation? Issues to be aware of in franchise documentation and related communications.

29 Oct 2012

Earl Gray and Sonya Hill examine a recent High Court case (__Barrie v Nature Discoveries Ltd__ [2012] NZHC 2209) that considered alleged breaches of the Fair Trading Act 1986 in the context of a franchise relationship...

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FYI: Intellectual Property – unTRUE RELIGION - Major Counterfeit Jeans Operation Shut Down

06 Sep 2012

Last year Guru Denim Inc., owner of the international premium denim brand TRUE RELIGION, identified counterfeit problems in New Zealand...

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X-Tech: ezine – Put a Clip on YouTube....Nek Minnit Someone Stole My IP

16 Apr 2012

Levi Hawken has become an internet phenomenon. All it took was a nine second YouTube clip in which he "coins" the phrase "nek minnit"...

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FYI: Intellectual Property – The Optus decision and the Uncertain Future of Format-Shifting

27 Feb 2012

A copyright decision in Australia’s Federal Court on 1 February over Optus’ “TV Now” service is attracting renewed attention to the ongoing debate over the legal status of format-shifting television programmes and other copyright works...

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X-Tech: ezine – Storm Brewing over Cloud TV

19 Dec 2011

Technology is influencing people's lives. Advances such as the advent of cloud services, faster broadband, and increased data caps are changing the way people consume content and other media. This extends to some of the more simple pleasures (or necessities) in life, like watching TV...

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FYI: Intellectual Property – Wai 262: Protection of Treasured Intellectual Property

15 Dec 2011

The report on the Wai 262 claim, released earlier this year by New Zealand's Waitangi Tribunal, includes a number of recommendations relating to intellectual property rights and treasured elements of Māori culture...

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FYI: Intellectual Property – New Weapons Against Criminal Trade Mark and Copyright Infringement

13 Oct 2011

Recent amendments to the Trade Marks Act 2002 and the Copyright Act 1994 have enhanced the government's ability to investigate and prosecute those who import and trade in counterfeit goods...

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X-Tech: ezine – Welcome to the August edition of our x-tech ezine

29 Aug 2011

- Hacking, Interceptions and Corruption – News All Over The World
– Is the Price of the New Internet Piracy Law a Treasure that No-One Can Afford?
– Law and the Internet: On Election Day, Be Careful What You Tweet!

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X-Tech: ezine – Welcome to the June edition of our x-tech ezine

20 Jun 2011

- Making Open Source An Asset, And Not A Liability, In Your Commercialisation Strategy
– Full Stream Ahead – Are There Leaks in New Zealand's New Internet Piracy Law?
– Privacy Leaks – Should You Tell or Should You Not?

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FYI: Intellectual Property – Caught in the Outfield: Three Strikes and You’re Out - New Zealand’s Copyright (Infringing File Sharing) Amendment Act 2011

12 May 2011

On Your Marks readers will recall the articles we have published over the past three years discussing the progress of the Copyright (New Technologies) Amendment Act 2008 (2008 Act) and the subsequent Copyright (Infringing File Sharing) Amendment Bill (Amendment Bill)...

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X-Tech: ezine – Welcome to the February edition of our x-tech ezine

28 Feb 2011

- If Shakespeare Were a Robot, Would "He" be an "Author"?
– Keep An Eye On Your KPIs
– Decoding Copyright and Foreign Television Broadcasts

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X-Tech: ezine – Welcome to the December edition of our x-tech ezine

06 Dec 2010

- Placing Software Source Code into Escrow
– An Update on the Copyright (Infringing File Sharing) Amendment Bill
– Exceptions to Exclusions and Limitations of Liability – Gross Misconduct and Wilful Default
– Stealing Facebook (And Other Good Ideas)

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X-Tech: ezine – Welcome to the October edition of our x-tech ezine

11 Oct 2010

- Syndicated procurement and all of government contracts – what is the difference?
– Why is that fake staring at me?
– Is there copyright in that source code?
– Privacy Act changes and some practical implications

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FYI: Intellectual Property – Ambush Marketing for RWC 2011 - Lining up to Lose...

10 Sep 2010

In around twelve months New Zealand will host the Rugby World Cup 2011 – easily the biggest sporting event to ever be held in New Zealand. With any major event comes the spectre of ambush marketing ...

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FYI: Intellectual Property – When an Asparagus Relationship Goes Bad

08 Sep 2010

New Zealand's copyright law provides that, for certain categories of copyright works, someone who commissions, and agrees to pay for, creation of a work will be the first owner of copyright. A recent CoA decision has examined what is meant by "agreement to pay"...

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FYI: Intellectual Property – Honey, I Over-Valued the IP! - WaikatoLink Ltd v Comvita New Zealand Ltd

08 Sep 2010

In arguably the most important case about honey this year, the High Court considered the issues arising from a failed Intellectual Property agreement between the University of Waikato's commercialisation and technology transfer company, WaikatoLink, and honey-based healthcare product manufacturer, Comvita...

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X-Tech: ezine – Welcome to the August edition of our x-tech ezine

30 Aug 2010

- Estimations, Authority, Liability Caps and a Dog Called Lulu
– Contract Schedules – Where Lawyers and Technical Specialists Collide
– Managing Your Brand's Online Social Life

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X-Tech: ezine – Welcome to the June edition of our x-tech ezine

08 Jun 2010

- You May XNotX Decompile or Reverse Engineer this Software
– Of Course We Can
– s92A Reboot: Ordinary Businesses Exempt From ISPs' New Anti-Piracy Obligations
– Software Patents Sent to the Recycle Bin

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FYI: Intellectual Property – Has the patent tortoise almost reached the finish line?

01 Jun 2010

The Patents Bill, which will provide a complete re-write and reform of New Zealand’s patent law, has been reported back from Parliament’s Commerce Select Committee and is heading for its second reading in Parliament.…

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FYI: Intellectual Property

The Patents Bill, which will provide a complete re-write and reform of New Zealand’s patent law, has been reported back from Parliament’s Commerce Select Committee and is heading for its second reading in Parliament. And in a new twist on the old fable, the Select Committee has added a few hare-like twists to this tortoise of a piece of legislation...

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FYI: On Your Marks – Simpson Grierson’s Intellectual Property Update

12 Apr 2010

- Lookalike Products? Europe and Australia – Not So Alike
– Patents – To Amend or Not to Amend.…

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FYI: On Your Marks

- Lookalike Products? Europe and Australia – Not So Alike
– Patents – To Amend or Not to Amend. Let’s Not Decide
– Leading a Horse to Water and Making the Calf Drink
– Remedies Corner: Compound Interest on an Account of Profits
– Team News: New Zealand’s Leading Intellectual Property Law Firm

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X-Tech: ezine – Welcome to the April edition of our x-tech ezine

12 Apr 2010

- An Indemnity? Sorry But We Can't
– The Anti-Counterfeiting Trade Agreement Hits New Zealand
– Rural Telecommunications Strategy
– Australia: No Copyright in Telephone Directories. What Does This Mean for New Zealand?

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X-Tech: ezine – Welcome to the February edition of our x-tech ezine

08 Feb 2010

- Luxury Brands Attempt to Hit Back At Online Marketplaces
– Copyright Myths and Online Content
– "I Want Out!" – Terminating Supply Agreements
– My Loss Came Round a Corner – Does That Make It Indirect or Consequential?

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X-Tech: August 2009 – Section 92A - The Saga Continues

02 Dec 2009

The proposal releases ISPs from the obligation to have a policy to terminate the internet accounts of repeat copyright infringers...

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X-Tech: October 2009 – The Collaborating Conundrum

01 Oct 2009

Late last year, the Telecommunications Carriers' Forum updated the Code of Practice for the Provision of Content via Mobile Phones that it adopted in 2005...

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FYI: On Your Marks – Visual Artists to Get More Share in the Spoils

19 Aug 2009

For emerging visual artists, the price tags for their new pieces of work will generally be low. Only when an artist's work becomes well known will the work generate a higher value...

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Q&A: Intellectual Property

01 Aug 2009

Is making back up copies of software for disaster recovery purposes permitted under New Zealand law?...

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X-Tech: August 2009 – Proposed Reforms to Public Sector Procurement

01 Aug 2009

In June, the Government announced a reform agenda for government procurement policy and practice...

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X-Tech: August 2009 – Outsourcing Arrangements and the Privacy Act

01 Aug 2009

The outsourcing of business functions (such as information technology and customer support/call centres) to third party providers...

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X-Tech: August 2009 – Copyright Commissioning - Back to Basics

01 Aug 2009

As reported in our May 2009 edition of On Your Marks, the National government has dropped the Copyright Amendment Bill which proposed the abolition of the copyright commissioning rule...

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FYI: Franchise First – Franchising regulation in New Zealand - not broken, no need to fix it

23 Jun 2009

After a ten month hiatus, the issue of franchise regulation has again hit the headlines in New Zealand. It appears it will be a fleeting visit only...

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X-Tech: June 2009 – Disaster Danger! Is Your Software Licence Ready for a Disaster?

01 Jun 2009

The terms of a software licence may seem to be a peripheral concern when contemplating a disaster recovery plan for your business...

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X-Tech: June 2009 – Rolling Out Ultra-Fast Broadband To (a Majority of) New Zealanders

01 Jun 2009

The New Zealand Government has announced its Broadband Investment Initiative and plans to invest up to $1.5 billion alongside private sector co-investors...

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X-Tech: June 2009 – Domain Name Dispute - Watch it on the Country Channel

01 Jun 2009

Domain names are registered on a first-in, first-served basis, and there is no requirement for registrants to show that they have any rights in the particular name they register...

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X-Tech: June 2009 – It's Good To Have A Stick, But Make Sure It's Not Too Big

01 Jun 2009

In the absence of any tailored contractual solution, the parties often have only two options...

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FYI: On Your Marks – Omnibus Amendment Bill and Patents Bill Receive First Readings

13 May 2009

The Trade Marks (International Treaties and Enforcement) Amendment Bill proposes a number of amendments to the Trade Marks Act 2002 and the Copyright Act 1994...

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FYI: On Your Marks – Proposed Copyright Amendments on the Scrap-Heap

13 May 2009

First for the scrap-heap was the Copyright (Artists’ Resale Right) Amendment Bill, which was withdrawn in March 2009...

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FYI: On Your Marks – Scope of Protection for Well Known Brands Considered

13 May 2009

Although the TIC TAC mark was clearly well known for mint candy products, the "stark differences" in goods meant that there was no suggestion of a trade connection, and consumers were unlikely to be confused...

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FYI: On Your Marks – Tiny Intelligence Ltd v Resport Ltd - Supreme Intelligence

13 May 2009

The Supreme Court recently affirmed the decision of the Court of Appeal in Tiny Intelligence Ltd v Resport Ltd, discussed in our April 2009 issue of On Your Marks...

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FYI: Franchise First – Court of Appeal decides both franchisors and franchisees are consenting adults

28 Apr 2009

The Court of Appeal recently released its decision in David & Anor v TFAC Ltd, which dealt with the fallout from a franchise relationship turned sour...

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Feature Article: Intellectual Property – Social Networking or Social Slander?

17 Apr 2009

Social networking sites such as Facebook, Bebo and Twitter have become day-to-day means of communication. The upside for employers is that these websites encourage "social networking", which can result in positive spin-offs for your business.…

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Feature Article: Intellectual Property

Social networking sites such as Facebook, Bebo and Twitter have become day-to-day means of communication. The upside for employers is that these websites encourage "social networking", which can result in positive spin-offs for your business. The downside is that these websites also pose a number of potential risks to your business.

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FYI: On Your Marks – Pre-Emptive Measures in Patent Disputes - Declarations of non-infringement

08 Apr 2009

The High Court has recently issued a decision regarding a little known and rarely used provision of the Patents Act 1953...

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FYI: On Your Marks – Additional Damages for Copyright Infringement - They’re 'additional to damages'

08 Apr 2009

In our May 2007 issue of On Your Marks we discussed the Tiny Intelligence Ltd v Resport Ltd decision, in which the High Court ruled that the category of damages known as 'additional damages' are not available...

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FYI: On Your Marks – High Court Acknowledges Copyright in Slogans - There’s copyright in this slogan

07 Apr 2009

Other copyright works were pleaded, but as Electropar admitted that it had infringed Sunlec's copyright in those works they were not rigorously discussed...

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X-Tech: April 2009 – Out of Commission?

01 Apr 2009

A Bill to amend the Copyright Act 1994, which would abolish the so-called "commissioning rule", was introduced to Parliament by the Labour Government towards the end of 2008...

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FYI: On Your Marks – Government Jumps Onboard with Release of Omnibus Amendment Bill

17 Feb 2009

The introduction of the Trade Marks (International Treaties and Enforcement) Amendment Bill on 8 September 2008 signifies a move by Government to amend certain deficiencies in New Zealand's current intellectual property regime...

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FYI: On Your Marks – International Treaties

17 Feb 2009

Under the Bill, amendments to the Trade Marks Act will allow New Zealand to accede to three important international trade mark treaties – the Madrid Protocol, the Nice Agreement and the Singapore Treaty on the Law of Trade Marks...

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FYI: On Your Marks – Customs and Border Protection

17 Feb 2009

The increase in world trade has generated an unprecedented proliferation of counterfeit products. In the modern marketplace, anything that can be bought and sold can...

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FYI: Franchise First – Franchise Appeal Runs Out of Puff

19 Nov 2008

Disputes between franchisors and franchisees relating to projected franchise turnover are common...

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FYI: On The Case – Lab Tests Wins $560M Contract Back From Medlab

06 Oct 2008

The Court of Appeal has handed the $560 million Auckland community pathology testing contract back to Lab Tests after the High Court took it off them last year...

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FYI: Stop Press – All Change - Commissioning Copyright Works

02 Oct 2008

New Zealand's Parliament is poised to make a radical change to the rules about copyright ownership. This move will turn current expectations and understandings on their head for a wide and diverse range of industries...

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FYI: Franchise First – Review of Franchising Regulation In New Zealand - If It Ain't Broke, Don't Fix It?

22 Aug 2008

The Ministry of Economic Development has released a discussion document requesting submissions on whether there is a need for specific franchise regulation in New Zealand...

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FYI: On Your Marks – Patents Bill (Finally) Introduced

19 Aug 2008

After waiting the best part of two decades, the long overdue revision of New Zealand's antiquated patent legislation took a monumental step forward...

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FYI: On Your Marks – New Zealand Joins Anti-Counterfeiting Negotiations

19 Aug 2008

The Anti-Counterfeiting Trade Agreement will establish a common standard for the global enforcement of intellectual property rights, particularly in the context of counterfeit and pirated products...

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FYI: On Your Marks – Factors Relevant to Accounts of Profits for Infringement

19 Aug 2008

This case examines the failure of the trade mark owner to act promptly to protect its rights in the Hefty trade marks and the impact of that delay on the amount of profits that is recoverable...

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FYI: On The Case – The High Court Herceptin Debate: To Fund or Not to Fund?

27 Jun 2008

In April, in an unprecedented move, eight women suffering from breast cancer took on the might of the Crown pharmaceutical funding agency Pharmac in the High Court...

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FYI: On Your Marks – All's Fair in our Love of Sport?

07 May 2008

When it came to the biggest international event in the rugby union calendar, the 2007 Rugby World Cup in France, it was the commercial value of the coverage on television which gave rise to a more interesting battle for many of us...

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FYI: On Your Marks – Praise for Some Guidance on Grounds for Revocation of Trade Marks for Non-Use

07 May 2008

Goodman Fielder produces a range of popular mayonnaise and salad dressings under the PRAISE brand in Australia...

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FYI: On Your Marks – Bad Faith: the "sleeping provision" raises some interesting questions

07 May 2008

The Neumann case concerned New Zealand Trade Mark Application No 704235 a mark incorporating a cartoon of a seated boy, accompanied by the words "El Niño Tarifa". Sons of the Desert, S.L. filed its application for the mark in November 2003...

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FYI: On Your Marks – Remedies Corner: Patent "Parasites" Not Destroyed

07 May 2008

In Ancare v Bayer, Ancare had applied for an interim injunction regarding what it claimed was Bayer's unlicensed use of its patented formulation for a remedy that destroys parasites in livestock...

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X-Tech: May 2008 – The Copyright (New Technologies) Amendment Act : Dragging Copyright Into The 21st Century

01 May 2008

After a protracted three years of debate, the Copyright (New Technologies) Amendment Act was passed on Tuesday 8 April 2008...

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X-Tech: May 2008 – Potential Provider Liability for Online Discrimination

01 May 2008

A recent case in a United States court has found that Roommates.com, LLC, an online forum allowing people to advertise and search for rooms to let...

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X-Tech: May 2008 – Free Trade With China - Big News For Business, A Soft Nudge For Intellectual Property Rights

01 May 2008

On 7 April 2008, New Zealand became the first developed country in the world to enter into a free trade agreement with China, heralding the beginning of a new age for trade relations between the two nations...

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X-Tech: May 2008 – Never Interrupt Your Enemy When He Is Making A Mistake

01 May 2008

"Never interrupt your enemy when he is making a mistake." This famous quote from Napoleon Bonaparte certainly sounds like good advice...

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Q&A: Intellectual Property

01 Mar 2008

I've come up with a new invention, but I can't afford to develop it for sale without an investor – how can I protect my idea so it is not disclosed by potential investors?...

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X-Tech: March 2008 – Rewarding Innovation

01 Mar 2008

A clear theme in recent economic policy has been the need to shift New Zealand's output towards innovative, high-value products which compete on the international stage...

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X-Tech: March 2008 – Anti-Spam Unit Sends a Strong Message to Spammers

01 Mar 2008

It has been approximately six months since the Unsolicited Electronic Messages Act 2007 came into force on 5 September 2007...

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X-Tech: March 2008 – The Copyright (New Technologies) Amendment Bill: Delayed by Individual and Big Business Interests?

01 Mar 2008

After receipt of submissions from the public and publication of a select committee report, the Copyright (New Technologies) Amendment Bill is due to be debated in Parliament for a second time...

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X-Tech: March 2008 – Can We Fix It? Yes We Can! Or, No We Can't? Repair and Spare Parts Obligations for Manufacturers

01 Mar 2008

With the current speed of technological advancements, and some items of technology becoming as much accessory as they are necessary, the rate at which people upgrade is increasing...

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