A trade mark is a form of intellectual property (IP) protection that seeks to protect your business’s brand assets. A trade mark provides you exclusive rights to use and commercialise your mark. It is important to consider international trade mark registration if you are considering expanding your New Zealand business overseas. This article will examine whether a trade mark registered with the Intellectual property Office of New Zealand (IPONZ) will protect you overseas and the advantages and disadvantages of international trade mark registration.
Does My New Zealand Trade Mark Protect Me Overseas?
In short, no. A trade mark registered in New Zealand will only give you trade mark protection within New Zealand. However, this does not mean extending your registration to different geographies is impossible. It is possible to register your mark in multiple countries.
When Should I Register My Trade Mark Overseas?
You should consider registering your trade mark overseas if you have expanded your business operations internationally or have plans of doing so in the future. There are numerous benefits of international trade mark registration, such as:
- giving you exclusive rights to your brand in different countries, which allows you to prevent others from using your mark without your permission beyond New Zealand;
- providing you with the opportunity to expand your business operations by giving you a safe way to offer your products or services internationally; and
- reducing the risk that you will infringe on an existing overseas trade mark and minimise any international trade mark disputes.
Some essential fees to consider include:
- WIPO filing fees or registration fees at a trade mark office; and
- legal fees.
You will also have to factor in the costs of trade mark maintenance. This includes monitoring for unauthorised use and costs involved with enforcing your trade mark rights overseas.
Finally, different countries offer varying levels of trade mark protection. As such, you must keep up to date about how well your mark is protected in each country you operate in and manage your marks accordingly.
Continue reading this article below the formHow Do I Register My Trade Mark Overseas?
There are two main methods of registering your trade mark overseas. This includes either:
- applying directly to the relevant country’s IP office; or
- applying through the World Intellectual Property Organisation (WIPO) under the Madrid Protocol.
The Madrid Protocol is useful if you register your mark in several overseas countries. This is because it allows you to file in multiple member countries through a single application. This process is more time efficient and cost-effective than applying for registration in each country individually.
To be eligible to register a trade mark using the Madrid Protocol, you must already have an existing mark or pending application with the IPONZ.
It is also important to consider that the Madrid Protocol does not simply give you worldwide trade mark registration. Rather, the WIPO will conduct an initial assessment and send your application to each designated country for examination. This means you are not guaranteed trade mark registration in each country you apply for and will be subject to each country’s own trade mark laws.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
Key Takeaways
A trade mark registered in New Zealand will not automatically provide you with international trade mark registration. However, it is possible to register your mark in multiple countries. Some key things to note about international trade mark registration include that:
- international trade mark protection allows you to expand your business operations internationally while protecting your brand;
- there are various ways to register an international trade mark, including under the Madrid Protocol;
- it can be costly to register international trade marks; and
- it can be difficult to maintain international trade marks without suitable resources.
If you need help with registering your trade mark 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
Your New Zealand trade mark will not protect your mark internationally. This is because a mark registered in New Zealand only gives your trade mark protection within New Zealand. However, it is possible to register your mark internationally.
You can register your New Zealand trade mark internationally by applying directly to the relevant country’s intellectual property office. Alternatively, you can register your mark through the World Intellectual Property Organisation (WIPO) under the Madrid Protocol. This enables you to file in several member countries through a single application.
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