Trademark protection for Australian businesses in New Zealand
Australia and New Zealand have had close ties and economic relationships for years.
For many Australian companies wanting to expand, the close geographic proximity and similar cultures make New Zealand an attractive proposition.
For the most part, trademark registration is specific to each country, so your trademark registration in Australia will not give you trademark rights in other countries.
It is also vital to note that your domain name and business name registration in Australia will not necessarily give you rights in other countries.
Registering trademarks in overseas countries
If you are based in Australia or have an existing Australian trademark registration there are likely two ways to secure a registered trademark in another country.
Firstly, you can file a trademark application under the Madrid Protocol (international trademark application) that can designate one or more of the 95+ countries that are party to the Madrid Protocol.
Secondly, you can file a trademark application directly into the region or country – often this option requires that you appoint a representative in that country
Before you consider filing an international trademark application, we suggest you consider the following points.
1. Conduct a search through Trade Mark office records of the countries and regions. This will help you determine if your trademark can be registered in a particular jurisdiction.
2. Ensure your trademark does not have contrary or culturally insensitive meanings in the language of the country you are seeking trademark registration in.
3. Find out whether the country provides rights to the first person to use the trademark in the country, or whether it provides rights to the first person to file a trademark application. Countries like Australia, New Zealand and the United States are ‘first to use’ countries. While countries like China and some European countries are ‘first to file’ countries. If you are seeking trademark registration in ‘first to file’ countries, you will need to file the application as soon as you can.
4. If the country you have filed your trademark application in is party to the Paris Convention, foreign trademark applicants can claim Convention priority for up to 6 months. This basically allows a foreign applicant to file into other countries within 6 months of their own initial application and claim that first filing date to gain priority over later filed trademarks in other countries.
Registering trademarks in New Zealand
The Intellectual Property Office of New Zealand (IPONZ) is the New Zealand government body responsible for registering intellectual property rights including:
- Designs, and
- Plant varieties.
The registration and renewal fees are slightly cheaper in New Zealand but trademark registration and protection process in New Zealand is similar to Australia. IPONZ does conduct examination in a quicker fashion than the Australian Office – usually seeing an initial result within 4 weeks from the filing of the trademark application. New Zealand and Australia both employ a ‘first to use’ rule.
That said, unlike Australia, IPONZ will not accept evidence of prior use as a certain way in which a later applicant might achieve trademark registration in the face of a cited, earlier filed similar trademark. Rather, a later applicant will need to consider filing evidence of honest and concurrent use for the examiners to consider, or, alternative actions to achieve registration if a similar mark has been filed first.
Non-traditional mark protection is available in New Zealand for marks including sounds, smells and three-dimensional signs. Under New Zealand common law, in some cases unregistered trademarks can be enforced. We recommend you register your trademark so you get statutory protection that can be advantageous in disputes over trademarks.
The business benefits to registering trademarks in New Zealand
When you register your trademark in New Zealand your business gets the following benefits:
1. Nationwide protection. Even if the trademark has not yet been used, trademark registration in New Zealand gives you rights throughout the country,
2. Border protection. In conjunction with the New Zealand Customs Service, registration of a trademark can give you a basis to stop unauthorised goods bearing a similar or the same mark from entering the New Zealand market,
3. Automatic protection. If you do not have trademark registration you cannot prevent unauthorised use of a mark unless you can show that reputation exists in the mark and that any unauthorised use is deceptive or misleading. This is an uncertain process that can be costly and hard to prove.
4. Defensive protection. Trademark registration gives you a statutory defence against any allegations that use of your registered mark infringes any other trademark registrations.
5. Cost effective enforcement. Registration of your trademark shows third parties that the trademark is taken. This can also block registration of deceptively similar trademarks by other businesses.
Why it’s important to register your trademark in New Zealand
Registering your trademark in New Zealand is usually an easy process. Because the New Zealand Trade Marks Office does not charge registration fees, you only need to pay one upfront official filing fee. New Zealand’s official/government trademark application and registration fee is NZ$150 per class of goods/services to register your trademark.
This is a small price to pay for peace of mind that your trademark is protected in New Zealand. (Total costs may be higher if you engage a trade marks attorney to attend to the process for you).
After you file a trademark application in New Zealand, the New Zealand Trade Marks Office will usually examine it within a 3-week period. If there are no objections or oppositions, IPONZ will protect your mark around 6 months after filing (although the approval is known much sooner).
The 6 month registration time-frame is to allow for foreign applicants filing to NZ with a Convention Priority Claim. If NZ is the only country of interest to an Australian trademark holder for extension of rights Quick off the Mark® suggests filing a direct NZ application is the best option for registration, as it is usually a little quicker than an application under the Madrid Protocol and certainly more cost effective.
If multiple countries, outside of Australia, are of interest it may be beneficial to consider registration through the Madrid Protocol option.
How to protect trademarks in Australia and New Zealand
If you require assistance to register your trademark and ensure your trademark is protected in Australia, New Zealand or any other country Quick Off the Mark® can provide competitive estimates to help register your trademarks in Australia and New Zealand. Call us on 1300 35 25 75 or contact us here.
The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.
Quick Off the Mark is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 17 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.