Does My NZ Trade Mark Apply Overseas?

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Table of Contents

• What Do I Gain As the Owner of a Trade Mark?
• Do I Have Trade Mark Rights Overseas?
• How Can I Register My Trade Mark Overseas?
• Other Options
• Key Takeaways
• Frequently Asked Questions

In New Zealand, you can register your trade mark with the Intellectual Property Office of New Zealand (IPONZ) to gain various rights and protections. However, you may wonder if doing so gives you these same benefits internationally. This article will provide some background and explain whether your New Zealand trade mark applies overseas.

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What Do I Gain As the Owner of a Trade Mark?

You gain various legal rights when you own a trademark in New Zealand. A trade mark serves as a “badge of origin” for your business, linking you to the goods or services you provide. A common example is the business logo you use on your product packaging to indicate your business as its source. Therefore, when you own this trade mark, you are the only one that can use this imagery or signage when associated with your particular goods or services.

In particular, in New Zealand, as the registered owner of a trade mark, you receive:

• exclusive use of your trade mark throughout the country;
• the ability to commercialise and profit from your trade mark;
• legal powers should a third party infringe on your trade mark rights by copying your trade mark;
• restrictions on IPONZ accepting applications for identical or similar trade marks after yours;
• the ability to license your trade mark to others in exchange for compensation; and
• a public record of your ownership on the national trade marks register.

Do I Have Trade Mark Rights Overseas?

The above rights can be highly beneficial for your business. However, these registered rights that correspond to your New Zealand trade mark only apply within the country. This is because your trade mark exists on the New Zealand register. As a result, it protects the goods or services that you sell in New Zealand to your customers.

Therefore, if a party overseas uses or copies your trade mark to sell the same goods or services, you cannot rely on your New Zealand trade mark rights to protect your brand.

How Can I Register My Trade Mark Overseas?

If you have an existing New Zealand trade mark with protection that you wish to extend internationally, there are various options. In particular, you can use a process called the Madrid Protocol. The Madrid Protocol is an international trade mark management system that relies on various legal agreements signed by the countries that are part of its network. Accordingly, New Zealand is a part of this network.

Using the Madrid Protocol, you can file a single application with your existing trade mark, pay one set of fees (which increases depending on the number of countries selected), and potentially gain protection in a range of the 125 member countries of this system. Therefore, if you want to maintain a global brand with your trademark, this could be a good option.

With an existing New Zealand trade mark, you can file your international application through IPONZ. They can then certify and forward it to the World Intellectual Property Organisation (WIPO). Notably, your trade mark will go through a similar evaluation process as it did for its New Zealand registration. So, you must ensure it meets the necessary criteria for the countries you wish to gain protection in. 

Other Options

Using the Madrid System is not the only way you can protect your trade mark overseas. In particular, you can register your trade mark using the national office of the country you want protection in. You will have to go through their local registration process. However, you do not necessarily have to use the same trade mark as you do in New Zealand or other countries. This may be useful if you wish to differentiate your branding strategy by country.

Key Takeaways

If you register your trade mark in New Zealand, the various rights you gain only apply within the country. However, there are options for gaining trade mark protection overseas, depending on the goals you want to meet for your branding and reputation. 

If you need help with your trade marks overseas, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions