August, 2019 - Parry Field Lawyers

How can you ensure that people have the freedom to share their concerns at meetings without being worried about the consequences of recording them in the minutes? This is an issue which plagues various groups.

The Privacy Act 2020 applies to any agency. This is defined as a person or body of persons that collects, uses or stores personal information. Examples of this include businesses, organisations, church groups or societies. If you are a private organisation (i.e. not a government body), the Official Information Act does not apply and you will have a lower threshold of disclosing information.

Information is considered to be personal when it is about an identifiable individual. It does not have to be private or sensitive to meet this threshold.

When personal information is stored by an agency, the person it relates to has the right to access this information. This may include:

Any references to them in the minutes of a meeting;
Communication between the person and the agency;
Decisions made in relation to the person;
Any complaint the person has made or a complaint about that person.

A request to access this information may be refused if:

the information would disclose a trade secret;
the information would be likely to unreasonably prejudice the commercial position of the agency or person;
disclosure would involve personal information about other people. An individual may only request access to information relating to themselves under the Privacy Act 2020. This may mean that all other references to other people are taken out of the document before it is given to the requester;
disclosure would result in an unjustifiable breach of another person’s privacy.

If you are an agency concerned with not disclosing sensitive information about someone, you should consider:

censuring the names if disclosure was recorded. As personal information has to be identifiable, removing the names would avoid this;
not recording the concerns.

Ultimately your response will be determined by what the agency’s own policy and constitution allows and the current standard practice.

If you want to dive deeper into this topic, the Privacy Commissioner has also published this for clubs and societies.

If you would like assistance in re-writing your agency’s policy or constitution, please contact Steven Moe at StevenMoe@parryfield.com

Under the Financial Services Providers (Registration and Dispute Resolution) Act 2008, everyone who provides, or offers to provide, a financial service in New Zealand or from New Zealand to other countries must register as an FSP. Importantly, before you offer your financial services you must be registered.

There is a simple straightforward application process for registration. This can be found online on the website of the Ministry of Business, Innovation and Employment.

Firstly, the application process depends on what kind of FSP you are. There are three different types depending on your business and the services you will provide – an individual; an entity already registered via the Companies Office; or another entity or body.

Applying as an individual:

There is basic information which you will have to include the application such as your full legal name, date of birth, residential and contact address, your business address and any trading names you use.

Applying as a business already on a Companies Office register:

You will have to provide your company or entity’s name, the Companies Office number or its New Zealand Business Number. If you do not know what this is, you can search for it via the Companies Register. Furthermore, include any trading names you use, your business and contact address and the basic details on your directors and other controlling owners and managers.

Applying as another entity or body:

The basic information you will have to provide is about your business, such as its legal and trading names, the country of origin, the business and communication address and also an email address. You will also have to provide the basic details on your directors and other controlling owners and managers.

For all applications:

Firstly, in completing this process, whatever kind of FSP you are, you will have to provide information about your business and the services it will provide. In the form you fill out online there are a list of services. You would select all the ones that you intend to provide upon registration. This is something that needs to be kept up to date as well. The services that you need to declare can be found under section 5 of the Financial Service Providers (Registration and Dispute Resolution) Act 2008.

Secondly, every individual FSP and those people in charge will have to undergo a criminal history check.

If you are applying to the Financial Markets Authority (FMA), at the same time, to be an Authorised Financial Advisor (AFA), there is additional information to prepare. (https://fsp-register.companiesoffice.govt.nz/help-centre/applying-to-provide-licensed-services/applying-to-be-an-afa/)

When registering as a FSP there are transaction fees to pay:

○ Application fee, incl. GST: $345
○ Criminal history check fee per person, incl. GST: $40.25
○ FMA levy, incl. GST: $529
○ TOTAL: $914.25

Furthermore, after you register you have to pay fees once you’ve completed your annual confirmation:

○ The Companies Office Fee, incl. GST: $75

Alongside this, you will pay levies to the Financial Markets Authority (FMA).

○ The amount of levies you pay depends on your class of service provider and the services you provide.
○ Levies are listed under Schedule 2 of the Financial Markets Authority (Levies) Regulations 2012.

This online process is efficient and easy and should not take up too much of your time.

Please note that this is not a substitute for legal advice and you should speak to your lawyer about your specific situation. Should you need any assistance with this, or with any other Commercial matters, please contact Kris Morrison or Steven Moe at Parry Field Lawyers (+64 3 348 8480).

Trade Mark Protection: Key things to know when registering and maintaining a trade mark in New Zealand

A trade mark protects distinguishing names and logos, making it one of the most important business assets you can own. As the number of enterprises in New Zealand now exceeds over half a million and counting, it is more important than ever to protect your business’s hard earned reputation. One of the best ways to do this can be by registering a trade mark.

Parry Field has previously published an article on this matter. This article seeks to add to this previous publication, by providing links to several further discussions on some of the more complex and often confusing aspects of trade mark registration. Parry Field Lawyers provide legal advice on a range of commercial matters including protecting your intellectual property.

No offence! Ensuring your Trade Mark is not likely to Offend Māori and other Community Groups

What is a Search and Preliminary Advice Report? Do I Need One?

Could you be more specific? Working out your Trade Mark’s Specification

Broadening your Horizons? How to register your Trade Mark Internationally

Applying for a trade mark with IPONZ will only protect your company mark in New Zealand. If you are considering protecting your trade mark in other countries, you can use an international trade mark filing system called the Madrid Protocol. This system can use your original New Zealand application as a base to apply for your trade mark in as many as 119 participating countries.

This application is called a ‘New Zealand Office of Origin’ trade mark and requires only one application, one set of fees, one designated place to update and maintain your application and one global renewal date. As a preliminary step, it might pay to see whether a trade mark the same as, or similar to yours has already been registered in other countries. You can search the International Trade Mark Register here.

While registering your trade mark in a number of different countries might be relatively straightforward, it is by no means cheap. In fact, registering your mark in all of the 119 Madrid Protocol participating countries will cost a little over $40,000. For this reason, it pays to be selective when deciding in which countries you will pursue your application – some registrations can cost a lot more than others. For example, applying for a trade mark in Turkey will cost just over $100, but a trade mark application in Uzbekistan will cost you almost $2,300. You can access a full breakdown of the relevant costs in each country here.

It may also pay to investigate any special requirements a country you intend to register your trade mark in might have. For example, registration in the United States of America requires the additional signing of a Declaration of Intention, while registration in the European Union requires the applicant to designate a second language (French, German, Italian or Spanish) in which contesting parties can challenge your application.

You can find out more about these specific requirements, as well as how to apply for an international ‘New Zealand Office of Origin’ trade mark more generally here.

Should you need any assistance with these, or with any other Commercial matters, please contact Kris Morrison or Steven Moe at Parry Field Lawyers (+64 3 348 8480).

For a more general overview of registering a trade mark, please see our original article here.

To properly classify and protect your trade mark, IPONZ requires each trade mark to be registered within one or multiple goods or services specifications. You must also currently trade, or hold an honest intention to trade in each of the categories you specify. New Zealand uses the World Intellectual Property Office’s ‘Nice Classification’, which contains 45 classes of goods and services.

Of these 45 classes, classes 1 to 34 categorise goods, while classes 35 to 45 categorise services. For example, class 25 includes clothing, footwear and headgear, while class 37 includes construction and repair services. Within these 45 classes, goods and services specified range from abacuses to zip fasteners, art hire to zoological garden services.

With so many categorised types of goods and services, you may find it helpful to use this search database to see what class/classes your good or service falls within. Alternatively, you can find an alphabetically ordered list of all of the ‘Nice Classification’ classes here.

Properly classifying your trade mark is important both before and after you trade mark is registered. To process your application, the class/classes you have applied in will help determine whether the trade mark has distinctive character or is confusingly similar to any already existing trade marks.

Upon successful registration, the specification of the trade mark will also determine the trade mark owner’s rights where they might need to take legal action against an infringing mark by another company. Where the infringing mark is in the same class as specified by the existing trademark, the owner will have a greater claim against that infringement.

For example in a recent High Court case, the court rejected an application for the trade mark ‘Shacman’ in class 12 (commercial vehicles). The court reasoned that the infringing trade mark was likely to deceive or be confused with an already existing trade mark; ‘Man’. Highly influential in this decision was the fact that the already existing trade mark was also registered in class 12.

Therefore, while taking extra care to ensure you register your trade mark in the right class/classes might seem pedantic, it will better protect your intellectual property from infringing trade mark applications in the future.

Should you need any assistance with these, or with any other Commercial matters, please contact Kris Morrison or Steven Moe at Parry Field Lawyers (+64 3 348 8480).

For a more general overview of registering a trade mark, please see our original article here.

The Intellectual Property Office of New Zealand (IPONZ) encourages first time applicants to make an initial application for a ‘search and preliminary advice report’ (S&PA) before making an application to register their trade mark. This article seeks to give some clarification about what an S&PA report is and in which circumstances you may or may not want to make such an application.

An S&PA report consists of two parts and will give you an assessment within five working days as to whether your proposed trade mark complies with the requirements of the Trade Marks Act 2002. More specifically;

1. A search report will find whether anyone else currently holds a trade mark the same as or similar to your proposed trade mark.

2. A preliminary advice report will find whether your proposed trade mark renders your business clearly distinguishable within your industry.

Individually, each service costs $40 excluding GST, or $80 excluding GST for both services. While the services might be useful, applicants should be aware that applying for the reports is not compulsory. In fact, conducting your own search and ensuring your trade mark is distinguishable may not be as difficult as it sounds, and could save you money.

Conducting your own Search

There are four different searches you should complete to check the availability of your trade mark:

1. IPONZ Trade Mark Register

This register is the best place to begin your examination, offering a thorough search of already registered trade marks in New Zealand. You can access this database here.

2. ONE Check

As well as showing you already registered trademarks, ONE Check will also show you the availability of company names and domains. You can access this database here.

3. International Trade Mark Register

Searching this database will allow you to see if anyone has already applied for your trade mark in New Zealand, but it hasn’t yet been added to the New Zealand register. You can access this database here.

4. General Web Search

Lastly, we suggest you use a search engine, such as Google, to search for your proposed trade mark. This will show you any businesses that may already operate under your name. This search is not absolutely necessary, in that businesses with a name or logo that is not trademarked will not prohibit your application, but it may be worthwhile to assess who else could be considering registering a similar trade mark in the future.

If after conducting the above searches you are not able to find an existing trade mark at all similar to yours, it is unlikely you need to procced with the $40 search report. However, if any of the database searches return a similar existing trade mark, we suggest applying for a search report before proceeding. The $40 cost could save you the larger cost of a failed application.

As a general pointer, trade marks that attempt to register a compound word that includes an already trademarked word (registered in the same or similar specification category) are less likely to succeed. For example in a recent High Court case, the court held that the trade mark ‘Shacman’ was likely to deceive or be confused with the existing trade mark ‘Man’. Both trade marks were registered in class 12 (commercial vehicles).

Self-Assessing the Distinguishability of your Trade Mark

The Trade Marks Act requires each trade mark to have a distinctive character. For example, attempting to register the name ‘Budget Supermarket’ for a food and household goods retailer is unlikely to be seen as distinguishable as it could describe many traders in their nature of business. Similarly, the name ‘Blueberry’ as a trademark for fruit would not be seen as distinguishable, because marks that simply describe the good or service often cannot distinguish that good or service of one trader from another. Using the name ‘Blueberry’ as a trade mark for an architecture firm, however, would be distinctive.

If you are certain your trade mark is distinguishable, it is unlikely you need to proceed with the $40 preliminary advice report. However as with the search report, if you have any doubts regarding your trade mark’s distinctive character, it may be worth the $40 cost to save you the larger cost of a failed application.

Before registering, it also pays to ensure your trade mark is not on the list of protected words and is not likely to offend Māori or another significant section of the community. You can read our article on ensuring your trade mark does not breach this ‘offensiveness’ standard here.

Should you need any assistance with these, or with any other Commercial matters, please contact Kris Morrison or Steven Moe at Parry Field Lawyers (+64 3 348 8480).

For a more general overview of registering a trade mark, please see our original article here.

The Trade Marks Act 2002 outlines that trade marks must be rejected if they are likely to offend a significant section of the community. The first part of this article discusses trade marks that are likely to offend a significant section of the community more broadly, while the second part focuses specifically on trade marks that are likely to offend Māori.

Likely to offend a significant section of the community

Adopting the Macquarie Dictionary’s definition, the Intellectual Property Office of New Zealand (IPONZ) acknowledges the word ‘offend’ means to ‘irritate in mind or feeling’ and ‘to cause resentful displeasure in’. Under this definition, when assessing whether a trade mark is likely to offend a significant section of the community, IPONZ outlines that its examiners will take into account the following considerations:

– Each case must be decided on its own merits.

– The question must be considered as at the date of application.

– The question must be considered objectively, from the point of view of “right-thinking members of the public”.

– A mark should be considered likely to offend a significant section of the community where:

– The mark is likely to cause a significant section of the community to be outraged; and/or

– A significant section of the community is likely to feel that the use or registration of the mark should be the subject of censure.

– A significant section of the community is likely to feel that the mark should be the subject of censure where the mark is likely to undermine current religious, family or social values.

Influential on the New Zealand approach to assessing what suffices ‘a significant section of the community’ was the 1976 ‘Hallelujah Trade Mark’ case in the UK. When deciding whether to allow the trade mark ‘Hallelujah’ as the name of a women’s clothing brand, the Registrar’s Hearing Officer found the trade mark was “reasonably likely to offend the religious susceptibilities of a not insubstantial number of persons”.

Although this trade mark application might be decided differently today, the Hearing Officer stressed that rejection of an application is warranted even where the group of people offended are a minority, so long as they are substantial in number. Influenced by this UK decision, IPONZ also outlines that its examiners will also take into account the following considerations:

– The significant section of the community may be a minority that is nevertheless substantial in number.

– A higher degree of outrage or censure among a smaller section of the community, or a lesser degree of outrage or censure among a larger section of the community, may suffice.

Lastly, one interesting principle that the IPONZ examiner will consider is that the application should not be rejected merely because the mark is considered to be poor taste. In a more recent decision by the Office for Harmonisation in the Internal Market (the trade mark registry for the European Union) the previous examiner had rejected the trade mark ‘Dick & Fanny’ on the basis it could offend a significant portion of English speaking consumers. However upon appeal, the trade mark was accepted, on grounds that the trade mark “may, at most, raise a question of taste, but not one of public policy or morality”.

This decision has made it clear that a distinction should be drawn between trademarks that are offensive and trade marks that could be considered poor taste. While the former will be rejected, registration of the latter is not necessarily prohibited.

Likely to offend Māori

In the mid 1990’s, in response to claims that the Trade Marks Act 1953 insufficiently protected Māori intellectual property, the New Zealand Government established the Māori Trade Marks Focus Group. On the focus group’s recommendation, the commissioner now has access to the Māori Trade Marks Advisory Committee when making decisions on Māori trade marks. While not binding, the committee provides advice to the commissioner to minimise the risk of registering trade marks that are likely to cause offence to Māori.

All trade mark applications using Māori text or imagery will be referred to the advisory committee, who will then make a recommendation to the commissioner. One of their key considerations concerns the Māori words ‘Tapu’ and ‘Noa’. Tapu is the strongest force in Māori life, and can be used to describe people, objects or places that are ‘sacred’ or carry ‘spiritual restrictions’. Conversely, noa can be used to describe people, objects and places that are ‘common’, from which the tapu has been lifted. Therefore, trade marks that combine or associate tapu and noa can be considered offensive or inappropriate to a number of Māori.

For example, in 1927 the ‘Native Brand Co’ produced Worcester sauce under a logo that depicted a rangatira (Māori Chief, which is a position considered tapu). IPONZ considers that such a trade mark would not likely be registered today, because associating tapu (a Māori Chief) and noa (a household food items) signifies an attempt to lift the tapu of a Māori Chief, which could be considered offensive.

In some circumstances, it may be appropriate for a Māori name to be gifted to a business or organisation by tangata whenua – the Māori people of the land. Such a gifting or blessing is often done in accordance with mana whenua – the mana or power that comes from the land or rights to the land. A recent example was the gifting of the name ‘Tūranga’ to the new Christchurch City Central Library by Ngāi Tūāhuriri, a subtribe of Ngāi Tahu. Because the name honours a North Island settlement that was home to the Ngāi Tahu ancestor Paikea, use of the name without Māori consent could have likely been considered offensive.

If you are still unsure whether your trade mark might be considered as too offensive to be registered, you may like to consider getting a ‘Search and Preliminary Advice Report’ from IPONZ. This preliminary assessment will give an indication whether your Trade Mark will be allowed. You can read our article about getting a Search and Preliminary Advice Report here.

Should you need any assistance with these, or with any other Commercial matters, please contact Kris Morrison or Steven Moe at Parry Field Lawyers (+64 3 348 8480).
For a more general overview of registering a trade mark, please see our original article here.

Are you hosting an end of year work Christmas party for your employees where alcohol will be served? It is important that you are aware that you may be liable under Health and Safety legislation, even if the work party is held off-site.

What does the Health and Safety at Work Act say?

Under the Health and Safety at Work Act, employers are required to provide their employees with a safe workplace, protecting them against harm. The Act states the employers must, “so far as is reasonably practicable” ensure that the health and safety of employees is not put at risk. When defining what is meant by “reasonably practicable”, the Act states that employers should weigh up various factors including:

The chance of the dangerous event or risk occuring;
The level of harm that could result;
What the person knows or should know about the hazard of the risk and the ways of eliminating or minimising the risk;
Ways to reduce the risk; and
The cost associated with minimising the risk (and whether doing so is disproportionate to the risk itself).

“Hazard” as referred to in the Act includes where a person’s behaviour has the potential to cause death, injury or illness to a person, and includes whether their behaviour results from alcohol. Therefore, in the case of a work Christmas party where alcohol is being served, the potential for alcohol to affect someone’s behaviour, putting others at risk, is increased.

Employers must reasonably be aware of the hazard of risk occurring and must take reasonable steps to eliminate or minimise the risk in a reasonably practicable manner.

In the context of hosting a work Christmas event where alcohol is being served, reasonable steps to eliminate and minimise risk might include providing plenty of food, providing non-alcoholic drinks and setting limits on number of drinks.

Liability is not excluded just because you are off-site

It is important for employers to be aware that liability can arise at work events held off-site. As defined in section 20 of the Act, “workplace” means:

A place where work is being carried out, or is customarily carried out, for a business or undertaking; and
Includes any place where a worker goes, or is likely to be, while at work.

A venue that is used for work events will be considered part of the workplace. This means that even if the work party is held at a venue off-site, you cannot strike out the possibility of liability under the Health and Safety at Work Act and you must do everything that is reasonably practicable to provide a safe environment for your employees.

Conclusion: Be aware of the risk and put plans in place to eliminate that risk

In conclusion, it is important that you are aware of the risks and that you do everything that is reasonably practicable to provide a safe environment for your employees.

Every situation is unique so please discuss your situation with a professional advisor who can provide tailored solutions to you.

If you have any questions arising from the issues raised in this article or relating to any other employment law matters, you are welcome to get in touch with us by calling 03-348-8480.

Some of our staff from Parry Field recently attended an Institute of Directors seminar on the topic of culture and board. These are some key points that emerged that we thought were worth sharing:

When it comes to culture, Board members will always be looked at – so what culture will they model for those in the organisation?
Boards have a dual leadership role ensuring accountability (ensuring that purpose and values are kept to) and assurance (ensuring that executive is taking to action to achieve the desired culture.
Values may be written and put on the wall, with a vision statement and policies – those are visible, but they are just the tip of the iceberg. There are also invisible factors such as the water cooler conversations, the shared myths over what is important and the “unwritten rules”. An example is the the myth that Kodak did not innovate enough, when in actual fact they invented the first digital camera well ahead of the game. They commercialised one of the first digital cameras in the 1990s and spent a lot on R&D, but the people at the top of Kodak were ‘film’ people with 80% market share. So while values did not include profitability, ultimately the unwritten value, the invisible factors, drove the decisions that led to their end.

Reflection

How well is your culture living and breathing in your organisation? The key is that all of this needs to stay on the radar!
There are some key elements of culture indicated in the “Johnson and Scholes Cultural web” that include:
- Stories – who is respected within the organisation? How are the events that occur interpreted?
- Symbols – for example, who has open plan, who has corner office, who has car park?
- Rituals and Routines – morning teas, Friday evening drinks etc.
- Power Structures – who has the power within the organisation (whatever their title)?
- Organisational Structure – what do informal relationships signal (for example, does the Chair defer to someone else on certain things)?
- Controls – what is it that controls how things are done in the organisation? An example is asking whether budget and profit are valued over values (which could mean a person simply meets targets but does not model what the organisation stands for).

(More information here).

The real focus and point of this article was to make you aware of visible and invisible factors and the messages that are sent through the key elements set out above. It is important to make sure that values are understood and clearly communicated.

This article is not a substitute for legal advice and you should speak to your lawyer about your specific situation. Please feel free to contact us at 03 348 8480 or by email Steven Moe – stevenmoe@parryfield.com

The Inland Revenue Department recently issued their views on the meaning of “wholly or mainly” in an interpretation statement and fact sheet. The upcoming change as a result of this new information will likely impact many donee organisations in New Zealand, so it is important that you are fully informed and aware of the implications.

We have received copies of the interpretation statement and fact sheet, which will shortly be available on the Inland Revenue website, and have set out below the key points to take away from this new information:

1. Interpretation of “wholly or mainly”

The “wholly or mainly” test, which relates to an organisation having “donee organisation” status, is governed by section LD 3(2)(a) of the Income Tax Act 2007, which requires:

“A society, institution, association, organisation or trust that is not carried on for the private pecuniary profit of an individual, and whose funds are applied wholly or mainly to charitable, benevolent, philanthropic, or cultural purposes within New Zealand”

The benefit of attaining status as a donee organisation by meeting the requirements of LD 3(2)(a) is the tax advantage whereby natural persons who gift $5 or more to the organisation are refunded 33% of that gift by Inland Revenue. Uncertainty has arisen as to what exactly is meant by “wholly or mainly”, which this new interpretation statement seeks to resolve.

The interpretation statement issued by Inland Revenue includes a 16 page analysis of the words “wholly” and mainly”, concluding that, “while something considerably greater than a bare majority is indicated, it is not possible to interpret the expression with any greater certainty”. Inland Revenue has adopted a “safe harbour” approach with a threshold of 75% which will assist in making inquiries under section LD 3(2)(a).

2. “Safe Harbour” approach

A “safe harbour” approach has been adopted for administering the wholly or mainly test, which will involve:

1. Using the organisation’s financial statements to determine the “total funds” figure (this is the sum of cash of cash at the end of a year and cash spent during the year);

2. Calculating the amount of funds that were applied to specified purposes within New Zealand; and

3. Dividing this figure by the total funds figure to calculate the percentage.

This new approach has the effect that if the percentage calculated meets or exceeds the 75% threshold, Inland Revenue will generally not need to make any further inquiries as to how the funds of the particular organisation are applied.

3. Three year rolling period

In exceptional years there may be flexibility around the 75% threshold. For example, there may be one year where there is a tsunami in another country, and the organisation wishes to give more funds than usual to an aid organisation overseas. In these situations, Inland Revenue will instead be looking at the way the organisation has applied their funds in the past three years. However, in any of those three years, the percentage of funds applied in New Zealand should not be less than 50%, and the average of funds applied for purposes in New Zealand over the three years should not be less than 75%. Organisations should contact Inland Revenue in this situation.

4. Interpretation Statement to apply from beginning of 2019/20 income year for organisations

The interpretation statement has taken effect from the beginning of the 2019/20 income year for organisations in New Zealand.

If you have any questions or if you would like to receive a copy of the interpretation statement and fact sheet, please feel free to contact Steven Moe at stevenmoe@parryfield.com or 03 348 8480.

This article is not a substitute for legal advice and you should talk to your lawyer about your specific situation.