Dispute resolution in NZ – the times they are a-changin’

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Cheaper and faster court resolution for Intellectual Property (IP) disputes is on its way – maybe.

On 16 December 2019, the Rules Committee – a statutory body that has responsibility for procedural rules in the Supreme Court, the Court of Appeal, the High Court and District Court – called for feedback on potential reforms to the rules governing civil trial procedures in the High Court and the District Court.

The Committee is seeking feedback from the legal profession and “other courts users” (which I assume means businesses and members of the public) on reforms “to improve access to civil justice” by keeping the costs of coming to court proportionate to the nature and value of the issues in dispute.

The Committee is considering four specific proposals:*

  • Short form trial procedures;
  • Inquisitorial-type processes (instead of current adversarial processes);
  • Summary judgment triage procedure; and
  • Streamlining pre-trial and trial processes.

I won’t go into the specific proposals here, but my preliminary opinion is that they are a step in the right direction.

Something is missing though, in my view: a proposal to establish a specialist IP disputes tribunal.

At present, if you’re the owner of a registered trade mark, for example, and someone is infringing your rights in that trade mark, your options to resolve the dispute are limited.

As your first move, you might call the person up and/or send them a letter demanding they stop infringing.

If neither of those work, though, your only options – apart from doing nothing – are to sue the person in the District Court for breaching the Fair Trading Act or sue them in the High Court for trade mark infringement.

You cannot lodge a claim in the Disputes Tribunal, because the Disputes Tribunal is not allowed to hear intellectual property disputes.

Expensive reality

It’s no secret that court proceedings can be expensive, too, with the unfortunate reality being that most businesses, especially SMEs, can’t afford court proceedings. As a result, SMEs don’t enforce their IP rights as they should and thus are deprived of access to justice. The current system of court-based IP dispute resolution is thus very unsatisfactory – as indirectly recognised by the Committee.

A specialist IP disputes tribunal in New Zealand would be an affordable forum in which to decide uncomplicated “soft IP” disputes involving trade marks, copyright, designs, trade dress (or “get-up”’) and confidential information.

Due to their complexity, patent and plant variety rights disputes would be excluded. As to who would decide disputes before the tribunal, New Zealand has a plethora of appropriately qualified individuals to referee soft IP disputes; there is no shortage of expertise.

A specialist tribunal is not a novel idea. On the contrary, New Zealand already has specialist tribunals for employment disputes, motor vehicle dealer disputes, tenancy disputes and immigration-related disputes, for example.

We also have the Copyright Tribunal, but resolving copyright disputes is not within the current scope of its jurisdiction. It could be – but in my view it would be far better to have one tribunal, which could hear all types of IP disputes involving straightforward facts and straightforward legal issues – in other words, the vast majority of IP disputes in which SMEs might be involved.

To me, a specialist intellectual property disputes tribunal in New Zealand is a no-brainer. Ultimately, however, it is you – businesses and members of the public – who need to push for such a tribunal if you agree.

Are the times a-changin? We’ll see.

*See www.courtsofnz.govt.nz/about-the-judiciary/rules_committee/access-to-civil-justice-consultation

BEN CAIN

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Ben Cain is an Associate at James & Wells Intellectual Property and a LEADR accredited mediator