Trade Mark Infringement and Artificial Intelligence


Artificial intelligence (AI) technologies are starting to alter the way in which consumers shop for and purchase goods and services. This exploratory article examines some of the implications the increasing use of AI technologies may have to the law of trade mark infringement under New Zealand’s Trade Marks Act 2002. Trade mark infringement is typically predicated on a finding that there would be a likelihood of confusion caused by the defendant’s use of an identical or similar sign to a registered trade mark. Established trade mark doctrine assesses whether confusion is likely by having regard to the perceptions of the hypothetical “average” human consumer, who has deemed human traits and psychological characteristics. The article suggests that as AI becomes more heavily involved in helping consumers shop for and purchase goods and services various discordances with this established trade mark doctrine may develop. After analysing these potential discordances, the article considers how New Zealand trade mark legal doctrine may adapt. The article concludes by considering how the increasing use of AI technologies may challenge fundamental understandings of the role of trade marks, and the implications this could have for legal doctrine.

Batty, Rob,(2021). Trade Mark Infringement and Artificial Intelligence. New Zealand Business Law Quarterly (Forthcoming).

Read the full article here.

The New Zealand Law Society | Te Kāhui Ture o Aotearoa has issued final guidance on reporting requirements under the Conduct and Client Care Rules

The New Zealand Law Society | Te Kāhui Ture o Aotearoa has issued guidance on reporting requirements under the Conduct and Client care Rules. The rules came into force in July 2021 and attempt to clarify the behaviour expected of lawyers. The main goal of these guidelines is to tackle bully, harassment and discrimination in the New Zealand legal sector.

This final guidance has been issued after consultation with the legal profession. It is hoped this guidance will clarify the obligations of lawyers and provide advice on how to comply with the new rules.

Read the full article here.

New Zealand sees first pro-bono legal portal open

The New Zealand Ministry of Justice has funded NZ’s first pro-bono portal, connecting lawyers with people in need of legal assistance. Te Ara Ture is New Zealand’s first pro-bono legal service aimed at helping Kiwi’s who cannot normally afford to enlist the help of legal professionals. The software takes referrals from the community and through the portal matches legal matters with legal service providers.

So far 200 lawyers have signed up to receive referrals, but this number is expected to grow and the portal matures. Many of the referrals are coming through from community law centres as the portal grows in popularity.

Read the full story here.

New Zealand Law Society consultation on lawyer behaviour rules

The New Zealand Law Society | Te Kāhui Ture o Aotearoa is calling for feedback on new draft guidance designed to support the legal profession to comply with new rules governing the behaviour of lawyers.

The amended rules clarify the standards of behaviour expected of lawyers when engaging with clients, colleagues and others, with an emphasis on tackling bullying and harassment. Consultation on the guidance document is open from the 1st of June until the 16th of July. With the new rules coming into place on the 1st July.

The guidance is split into five sections:

  • reporting misconduct and unsatisfactory conduct
  • the clear expectations on law practices to have policies and systems to prevent and protect employees and other people that it engages with from bullying, discrimination, harassment or violence, and a designated lawyer to report to the Law Society about this conduct
  • support for people affected by bullying, discrimination, harassment or violence
  • what to do if you are the subject of a report or complaint
  • terminating instructions in the event of bullying, discrimination, harassment or violence by a client

New Zealand Law Society | Te Kāhui Ture o Aotearoa President Tiana Epati has said “This guidance is intended to be a practical tool to help law practices understand their new obligations under the rules. Bullying, discrimination, racial or sexual harassment and other prohibited behaviour have no place in any profession. Everyone has an individual part to play in securing the well-being of our legal community. We also need to ensure the public can have trust and confidence in the legal profession.”

Read more about the consultation and respond here. 

Auckland High Court consultation on reform of civil dispute resolution

The New Zealand Law Society has called on its members to respond to the Rules Committee’s ongoing consultation into reform in the civil dispute resolution system. The consultation is in response to new proposals put forward following concerns raised about an initial consultation paper in 2020. With concerned bodies including the Law Society.

Responders shared the Committee’s concern at what the Law Society termed in its submission the “justice gap” that has been “slow-burning” for at least a generation.  A number of causes for that ever-widening gap were identified by submitters.  One of these, particularly relevant to the Committee’s remit, is the high cost of lawyers and the significant costs associated with complying with procedural requirements.

The Committee’s draft proposals look to combat both of these barriers to civil justice, improving access to justice and public welfare.  Overall, the proposals are aimed at creating a range of fora for the resolution of civil disputes. With the goal of reducing the expense associated with complying with the procedural requirements, and bringing them into line with the value of the dispute being heard.

Within each forum, the Committee’s goal is for the particular procedures adopted in each individual case to match the importance to the parties of that dispute, in both theory and practice.  The more valuable and important the dispute, the more onerous the procedures that will apply, so as to avoid error and ensure “justice” is done. The Committee’s detailed proposals seeking to give effect to this vision are detailed in the consultation paper.

An overview of the proposals includes:

  • Recommending that the government enact legislation increasing the jurisdiction of the Disputes Tribunal and enhancing the Tribunal’s role in the civil justice system, positioning it as New Zealand’s primary civil trial court for disputes of up to at-least $50,000 in value.
  • Reforming the District Court to improve its structural ability to deal with civil claims, including by appointing part-time Judges, so as to allow that Court to make effective use of the existing potential for flexibility and tailored procedure found within its current rules.
  • Streamlining the presumptive model of procedure in the High Court. The existing extensive procedural rules will only apply to more complex cases, which truly warrant them. In other cases the new, less elaborate, approach will apply.  This will include replacing discovery with disclosure obligations, an early issues conference featuring substantive engagement by Judges, interlocutories dealt with on the papers, and a streamlined trial process placing much greater weight on the documentary record. Parties will have to justify the need for adopting more onerous obligations in a given case.

Read more about the proposals and consultation here, or view the Law Society’s first response here.

New Zealand Law Commission seeking views on class action and litigation funding

The Law Commission of New Zealand is undertaking a first principles review of class actions and litigation funding. They are currently seeking feedback from interested parties, having released an issues paper in December 2020.  The New Zealand Law Society is planning to respond to the call, and is asking for views on the issue.

The review is part of ongoing efforts to improve the affordability and efficiency of litigation. Class actions allow claimants with common issues to group claims together, allowing for more efficient and cost-effective resolution,  litigation funding can improve access to justice by allowing a commercial body to cover legal costs in exchange for an agreed percentage of compensation awards.

The Commission says the crucial question is whether the potential benefits of class actions and litigation funding can be realised in a way that manages the risks and outweighs any disadvantages. The Issues Paper summarises the issues and explores some options for addressing them.

The Commission’s preliminary view is that Aotearoa New Zealand needs a statutory class actions regime, the key advantages of this are improved access to justice, promotion of efficiency in litigation, and improved incentives to comply with the law.

The New Zealand Law Society committees considering the Issues Paper welcome comments from the profession and these can be sent to by 22 February 2021.

Read more about the Law Society Response here, or view the commission’s issues paper here.

New Zealand Law Society launches consultation into bullying and harassment

The New Zealand Law Society| Te Kāhui Ture o Aotearoa has announced a consultation on rule changes in the Lawyers and Conveyancers Act (Lawyers: Conduct and Client Care) Rules 2008 (RCCC) and the (Lawyer: Ongoing Legal Education Continuing Professional Development) Rules 2013 (CPD), in order to combat bullying and sexual harassment in the legal profession.  The proposed RCCC and CPD changes aim to clarify and reinforce conduct standards and obligations concerning discrimination, harassment, bullying and other unacceptable conduct by lawyers and employees of law practices.

The society has said that they are “committed to playing a leadership role in targeting and eliminating the culture of bullying and sexual harassment which exists in some parts of Aotearoa New Zealand’s legal community.

This work is a high priority for us in our role as the regulator of the legal profession and as one of the leaders in creating a safer, healthier and more inclusive and diverse legal culture.”

View the full consultation.

New Zealand Law Society – consultation on access to justice report

On the 14th May 2020, the New Zealand Law Society released the draft research report: ‘Access to Justice – a stocktake of initiatives’. The goal of the report is to assist the Law Society in taking a people-centred approach and to better understand the legal system from a consumer perspective. The Society hopes to bring in innovative and new thinking, to improve access to justice in New Zealand.

Law Society President, Tiana Epati, notes that “Our aim is to build a picture of the range of access to justice initiatives across Aotearoa New Zealand and to engage with stakeholders to better understand that broader landscape. Alongside this, we are also building a fuller picture of international initiatives.”

Consultation on the draft report is open from now until 3 August. Any questions or comments can be directed to A copy of the report is available as a PDF.


More regulatory responses to COVID-19

Following on from last month’s newsletter, we’ve put together the following list to examine different regulator responses to the COVID-19 pandemic. Here it is interesting to note the development and changes, as regulators begin to get a grasp on the crisis and develop innovative responses to meet the changing environment. If you have any questions or best practice for the rest of the ICLR community, please do get in touch, and we will be happy to include any of these in the next newsletter.

Illinois has introduced executive order 2020-14, this satisfies notarial requirements that a person must “appear before” a notary public if a two-way audio-video connection is used. It also allows documents to be witnessed through the same technology.

The Law Society of New South Wales has decided to run it’s annual Law Careers Fair as an online event, rather than cancelling it. The event will use zoom to create virtual presentations, with individual video booths and company landing pages replacing exhibitor booths. More information about the event is available here. The Society has also decided to reduce its $410 membership fee to $10, for the 2020-2021 period, allowing members to redirect funds to priority areas during the crisis.

The Law Society of Hong Kong has announced that civil hearing will take place remotely, with all other non-essential court hearings currently adjourned.

The Legal Sector Affinity Group which is made up of all the legal supervisory authorities in the UK, including the Law Society, Bar Council, CILEx, and the Law Society of Scotland, has released an advisory note on preventing money laundering during the crisis. The note discussed the increased risk of money laundering at the current time and what checks can be put in place to mitigate this.

The Council for Licensed Conveyancers in England and Wales is to allow members to defer fee payments, following the near-complete standstill in the UK property market. Members will be given the option to defer paying their practice fee and compensation fund contributions for April, May and June, which can be paid off over the following 4-12 months.

The California State Bar Board of Trustees has written to the California Supreme Court offering options and recommendations for the June First-Year Law Students’ Exam and the July Bar Exam. Full letter available here. Whilst the State Bar of Califonia has put in place emergency measures waiving late payment fees, as well as extending payment deadlines for membership fees and compliance deadlines.

The Law Society of Ontario has cancelled the lawyer licensing examinations and the call to the bar ceremonies due to take place in June. The society has said that alternative summer/autumn examination dates are being explored and that the administrative aspect of the call to the bar process is being undertaken remotely, allowing students to progress with their careers, with a celebration planned later in the year.

The Law Society of Saskatchewan and the Law Society of Alberta have temporarily reduced the articling requirements to a minimum of 8 months, instead of the previous minimum of 12 months, preventing a backlog of articling students due to limits created by coronavirus. Full statements available here and here. The Law Society of Alberta has also introduced changes allowing articling students to work remotely, as well as giving instructions on the supervision students doing this.

The American Bar Association has created a “Task Force on Legal Needs Arising Out of the 2020 Pandemic”, which launched a website on the 3rd of April to provide resources and information on the ongoing crisis and how this relates to the law. Statement available here, website available here. The ABA has also backed calls to adopt emergency rules that would allow recent and upcoming law school graduates who cannot take a bar exam because of the COVID-19 pandemic to engage in the limited practice of law, under the supervision of a licensed attorney, these individuals would have until the end of 2021 to practice without passing the bar exam. They hope this would limit the disruption to students careers, and help prevent the widening of the access to justice gap.  Full statement available here.

New Zealand Lawyers, Pro Bono, and Access to Justice

Executive Summary 

This report summarises the results of a study about the provision of pro bono legal services in New Zealand. Pro bono legal services – free legal assistance provided by qualified lawyers – is often pointed to as an option for assisting more New Zealanders to access legal services. This is in recognition that a large portion of the population does not qualify for legal aid (particularly civil legal aid) and cannot afford to pay a lawyer. To increase the amount of pro bono legal services available, the New Zealand Law Society President recently suggested New Zealand lawyers should aspire to deliver 35 hours per year (the same aspirational target as Australia). Little is known about the amount of pro bono services being offered, who is receiving them, and lawyers attitudes to providing more pro bono. We, therefore, designed a study to provide more information about the pro bono landscape in New Zealand, to help inform policy discussions on this issue. The study was conducted in two phases from September 2018 to February 2019 as part of a wider project about free and low cost services offered by lawyers. The first phase was a survey of the profession, which 360 lawyers completed. The survey included questions about how lawyers define pro bono, how much pro bono work they perform and for which clients, and whether they regard providing pro bono legal services as a professional obligation. The second phase involved qualitative interviews with 23 lawyers to elicit more detailed information about attitudes to pro bono work and how pro bono service provision operates in Aotearoa.

The results of the study suggest there is little shared understanding of what constitutes pro bono legal services. This is a significant impediment to any discussion about pro bono legal services, the amount of provision, who is providing the services, and the design of policy to encourage the provision of more pro bono services. The study also identified a blurring between legal aid services and pro bono. The underfunding of legal aid has meant that lawyers either consider legal aid is a form of pro bono or lawyers are offering pro bono to supplement legal aid. This is problematic in that pro bono legal services – which should be directed at those who do not qualify for legal aid but cannot afford a private lawyer – are being offered to litigants who qualify for legal aid. The results also suggest that were the NZLS to implement an aspirational target of 35 hours per annum, most lawyers would fall short of this target. While 41 percent of lawyers are exceeding the target, more than a quarter are doing no pro bono work that enhances access to justice. The remaining quarter are doing some access to justice focused pro bono work, but less than the suggested aspirational target. Furthermore, pro bono services are not distributed fairly either within the profession as service providers, or across the public, as service recipients. The study makes ten recommendations focused on three key themes: (1) that the profession develops a shared definition of pro bono, focused on pro bono that enhances access to justice, and that this definition be the basis for all programmes, targets and incentives for carrying out pro bono; (2) that a national clearinghouse for pro bono be introduced to minimise the administrative burden on lawyers providing pro bono and more equitably distribute pro bono services among the public; (3) that the legal profession associations encourage an increase in the amount of pro bono service via a number of mechanisms including regulatory reform and the introduction of an aspirational target.


Kayla Stewart, Bridgette Toy-Cronin, Louisa Choe New Zealand lawyers, pro bono, and access to justice
(University of Otago Legal Issues Centre, March 2020).

Available here