Expanding your business beyond New Zealand comes with various opportunities and challenges, including the need to secure your brand properly. This is especially the case where you are exporting flagship products unique to your business. As a result, you should ensure that your trade marks are protected overseas. This article will take you through three trade marks tips for when you plan to export your products to international markets.
1. Know Why Trade Marks Are Important for Expanding
A trade mark is a sign capable of distinguishing the goods or services of one business from those of other others. Among other things, trade marks include:
- logos;
- brand names; and
- slogans.
Trade marks are crucial for protecting your brand identity in international markets. This is because they help prevent your competitors from using similar marks that could confuse consumers about their origin. In turn, this will help protect the reputation of your business on a domestic and international scale.
2. Adopt International Trade Marks Protection Practices
Conduct a Trade Mark Search
The first step for protecting your marks internationally is to conduct a thorough trade mark search in your target market. A comprehensive trade mark search is essential because it helps minimise the chance of legal disputes and the potential rebranding costs if your trade mark conflicts with existing ones.
A trade mark search involves:
- using local databases of your target countries to check for existing trade marks;
- looking through the International Database of Registered Trade Marks; or
- engaging local trade mark lawyers can conduct a detailed search on your behalf.
Consider Local Laws
Trade mark laws vary significantly between countries. Some key areas to explore include:
- Registration process: You should understand the steps, documentation and fees required for trade mark registration in your target markets.
- Duration and renewal: How long trade mark protection lasts and the process for renewing the trade mark varies between countries.
- Use requirements: Some countries require that marks be used in the market within a certain period to maintain your protection.
Understanding specific trade mark laws in a different country can be confusing and complex. As a result, working with local trade mark lawyers can help you understand nuances between countries.
Register Your Marks
There are several pathways for registering your trade mark internationally. This includes:
- National applications: You can file trade mark applications directly in each country where you want protection.
- Madrid Protocol: A much more efficient way to register your trade marks in multiple countries through a single application is the Madrid Protocol. This system is managed by the World Intellectual Property Organisation (WIPO) and simplifies the process of international registration.
Monitor and Enforce Your Rights
It is important to monitor the market for potential infringements and enforce your trade mark rights post-registration. If an infringement is detected, you may need to send a cease and desist letter to the relevant party. This will warn them of potential future legal action against them if the infringement does not stop. However, in cases of ongoing or severe infringement, you may need to pursue litigation to protect your rights.
Adapt Your Strategy
Cultural differences can affect how your trade mark is perceived in different markets. For example, you must ensure that your trade mark translates well and does not have any negative connotations in the local language of your target market. You must also be aware of cultural norms that can impact the way your mark is received.
Continue reading this article below the form3. Understand Common Challenges
There are a number of common trade mark challenges that come up across all countries. Consequently, addressing these challenges will help you avoid significant costs in the future.
A common challenge is where similar existing trade marks exist. Where a similar trade mark exists in the target market, you have a few options which are:
- negotiating with the existing trade mark holder for co-existence agreements or the purchase of the trade mark rights; or
- rebranding your mark for that one specific market, which may be a more appropriate option if your brand is well-established in New Zealand and you do not want to rebrand entirely.
Another common issue is trade mark squatting, where businesses or individuals register trade marks with the sole purpose of later selling them to the rightful owner for a high cost. In some countries, demonstrating prior use can help reclaim your trade mark. However, in others, you will simply have to register your trade marks early in key markets to prevent squatters from exploiting your brand.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
Key Takeaways
As a business exporting goods internationally, it is essential those products have the same brand protection overseas as they do domestically. Indeed, one important aspect of expanding your New Zealand business is that your trade marks are protected in international markets. Before doing so, you must consider:
- why your trade marks are an important part of the expansion process;
- how to protect your markets internationally; and
- common challenges you will be faced with.
If you need assistance registering international trade marks for your New Zealand business, 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.
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