Outcomes

Some of the possible outcomes of intellectual property litigation or alternative dispute resolution procedures include:

Settlements
These could include damages or an account of profits from the infringer and a payment of legal costs.
Settlements could also include a licensing agreement or an agreement whereby the parties set out terms on which they are prepared to co-exist in the marketplace.

 

Revocations and cancellations
Rights can be cancelled because they should not have been granted, removed because they have become invalid or revoked for non-use.

Trade marks
A trade mark can be removed from the register if:

  • it no longer distinguishes the goods or services of the business; or
  • it has never distinguished the goods or services.
  • has not been used for a continuous period of three years following the registration date; or
  • has become a common name in general public use for the goods or services for which the trade mark is registered; or 
  • has become likely to deceive or confuse the public, as to the nature, quality, or geographical origin of the goods or services.

A trade mark can be declared invalid on the application of an aggrieved person if, at the date the trade mark was filed, it:

  • did not distinguish the goods or services of the business from those of others;
  • designated a characteristic of the goods or services provided such as, for example, the kind, quality, intended purpose or geographical origin of the goods;
  • was offensive to a significant section of the community; 
  • consisted of a sign which is customary in the trade; or
  • conflicted with earlier trade mark rights owned by another trader.


Patents
A patent application can be opposed on application by a third party if the invention:

  • Was not legally obtained from the true inventor
  • Was published or used in New Zealand before the priority date
  • Was not applied for within 12 months of the first overseas application
  • Is claimed in an earlier New Zealand patent
  • Is obvious and does not involve an inventive step
  • Is not an "invention" as defined by the Patents Act 1953.

A granted patent can be revoked on application by a third party on any of the grounds for opposition mentioned above or if:

  • The applicant was not entitled to apply for the patent
  • The invention is not useful
  • The specification does not sufficiently and fairly describe the invention or the method by which the invention is to be performed
  • The scope of the claims is not clear
  • The claims are not fairly based on the specification