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Intellectual Property FULL HOAN CHINH

(a) Patents
Tui can register her weed killer as a patent with the Intellectual Property Office of New
Zealand. A patent protects invention and techniques. A registered patent is a monopoly right
giving exclusive use of an invention for up to 20 years. It is possible in certain circumstances
to have the period of the patent extended. A patent is not patentable unless it is applied in an
invention of some description, shows invention and originality and related to the
improvement in, or in the manufacturer of, a product for sale. Tui weed killer meets all these
requirements. The weed killer is an invention; it shows invention and originality. Also the
weed killer is going to manufactured and sold commercially. Therefore Tui can patent her
weed killer although it will be very expensive. She will be protected by the Patents Act 1953.
A patent is a very strong form of intellectual property.
(b) Copyright
Tuis column of gardening tips is protected under copyright (Copyright Act 1994). The
Copyright Act 1994 enables Tui to prevent others from profiting from her work, by copying
her work or dealing in copies of the work with the exception of fair dealing.

Copyright is an automatic unregistered right that comes into existence every time an original
work is created, published and performed. In New Zealand it generally lasts for the authors
life plus 50 years. John by copying Tuis column without permission is infringing on Tuis
copyright. Therefore he might be required to compensate Tui or be given an injunction so he
can no longer have the columns on his website.
(c) Trade Mark
The words Tui recommends and a small picture of a Tui bird on the handle is a
trademark if Tui has registered it (which I am presuming she has). Tui will be protected by
the Trade Marks Act 2002 which provides protection for registered trademarks. Once
registered it is possible to prevent a competitor from using that or similar trade mark for any
similar good or services. The issue here is whether John has infringed on Tuis trademark.
Law: In Trade Marks Act 2002 Section 89 identifies infringements where identical or similar
signs are used in the course of trade. s 89(1)(b) A person infringes with the registered trade
mark if the person does not have the right to use the registered trade mark and uses in the
course of trade a sign identical with the registered trade mark in relation to any goods or
services that are similar to any goods or services in respect of which the trade mark is
registered, if that use would be likely to deceive or confuse. Subsection (1) applies only if the
sign is used in such a manner as to render the use of the sign likely to be taken as being used
as a trade mark. This was seen in Levi Strauss & Co & Anor v Kimbyr Investments Ltd.
Application: John is not using the words Tui recommends on his gardening tools but he
is using a small picture of a Tui bird which is very similar/identical to the Tui bird that Tui
uses on her gardening tools. John also places the Tui on the same place (on the handle). On
balance, even though John does not use the words Tui recommends he is still infringing
on Tuis trade mark, the Tui bird of Tuis trade mark is very unique and distinctive and an
ordinary consumer would be easily confused and deceived, especially because the Tui bird is
on the handle as well. John will most likely be given an injunction to stop using the Tui bird
on the handle of his gardening tools.
(d) Passing Off
Passing off is related in kind to the infringement of trademarks but does not require the
misuse of a registered trademark; the essence here is the passing off of the goods of A (John)
as though they were the goods made by B (Tui). The issue here is whether John is passing of
Tuis gardening tools.
Law: According to Powell J in Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd the
plaintiff needs to establish three things for an action in passing off; that there goods have, or
their business has, acquired a certain goodwill or reputation. That the actions of the defendant
have caused, or probably will cause, the ordinary purchasers of the plaintiffs goods, or the
ordinary customers of the plaintiffs business, to believe that the defendants business is that
of the plaintiff. That in consequence the plaintiff has suffered or is likely to suffer injury in
their trade or business.
Application: Tui is a well known and respected New Zealand gardening expert therefore
there is reputation attached to her business. Johns use of the Tui bird on the handle of his
gardening tools and the copying of some of Tuis columns on his website is likely to make
consumers believe that Johns business is that of Tuis. John sells poor quality gardening tools

compared to Tuis tools which are high quality. Therefore if consumers buy Johns gardening
tools thinking they were Tuis and they end up being poor quality that is likely to damage
Tuis business.

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