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If you have registered intellectual property in New Zealand, this does not mean that your intellectual property is protected overseas. So, as a business owner, you may be wondering how you can protect your intellectual property internationally. Importantly, you need to consider the specific country, market or industry you are working in and how intellectual property laws can vary between each. Therefore, this article will explain some potential intellectual property risks when engaging in overseas business and how you can protect your NZ intellectual property overseas.

International Intellectual Property

There is no all-encompassing international intellectual property protection. For example, in New Zealand, we have our own intellectual property laws and rules. Despite this, the New Zealand government has joined agreements that allow you to protect your asset under global intellectual property laws. For instance, the table below sets out three important intellectual property rights that are eligible for overseas protection.

Trade marks

This intellectual property right protects a distinctive sign representing your business, such as a business name or logo.

Designs

With designs, you can protect the visual appearance of a product, such as its pattern or distinctive shape.

Patents

A patent is an intellectual property right that protects new inventions.

Trade Marks

One way to protect your trade mark overseas is to register it individually in each foreign country that you want to protect it in. However, for a simpler process, you can register a trade mark using the Madrid Protocol system, an international trade mark system that covers over 100 countries. It allows you to register your trade mark overseas through a single trade mark application instead of multiple. If you want to register your trade mark internationally from New Zealand, you can do so through the Intellectual Property Office of New Zealand (IPONZ). You will need to:

  • already have a registered trade mark or trade mark application with IPONZ;
  • use your New Zealand trade mark as your international trade mark;
  • ensure both trade marks cover the same goods or services; and
  • have entitlement to file in New Zealand.

Additionally, for entitlement to file, you will need to be:

  • a New Zealand citizen;
  • permanently living in New Zealand; or
  • a business with a real and effective industrial or commercial establishment in New Zealand.

You will also need to comply with the domestic intellectual property laws of each country you want to register your trade mark in. 

Designs 

Additionally, IPONZ has agreed with the European Union Intellectual Property Office. This allows those with design registrations to use the DesignView tool. This tool contains the design registrations and data from 72 participating countries. This benefits you as a business owner because your design is more likely to be found when searched internationally. This means business owners who also want to remain original are less likely to accidentally infringe on your intellectual property rights. 

Patents 

The Patent Cooperation Treaty (PCT) allows you to file your patent with over 140 countries. Once you apply to have your patent internationally recognised under the PCT, you will then get the choice of which countries you would like to apply for protection under. For instance, you may apply to the PCT if you are:

  • a New Zealand citizen; and 
  • an owner or part-owner of the invention.

If you have an existing patent application with IPONZ, you can claim a PCT application within 12 months of your original New Zealand application date. Alternatively, you can file a new application with IPONZ or the World Intellectual Property Organization (WIPO). To do so, you need to include:

  • a PCT Request;
  • a complete patent specification; and
  • payment of the relevant filing fees.

Once you file your application, it will go through an international examination process determining its novelty against existing inventions. Crucially, this process will depend on what countries you wish to register your invention as a patent in and the overall patentability of your invention.

Counterfeiting 

Counterfeiting is when your brand or goods are copied by another for profit. As a business owner, counterfeiting dilutes your brand reputation and confuses your clientele.  Counterfeiting can become an issue if you begin engaging in overseas business because there becomes more reach for copycats to notice your brand and copy it. If you have registered intellectual property rights in different countries, these can go a long way to protect your brand against counterfeiters. For this reason, you must apply to register your intellectual property rights in the other countries you operate in outside of New Zealand.

However, there is an additional form of protection for your intellectual property overseas. The New Zealand Customs Service (NZCS) has a process to assist you if you think somebody is counterfeiting your brand or goods. In that case, you can contact NZCS to organise border protections against it. Then, you must lodge a border protection notice, which gives NZCS the details of your intellectual property and what they should look out for. NZCS has the power to investigate your problem and detain any suspicious material they find at the borders. 

Key Takeaways 

Although there is no blanket international intellectual property law, there are systems in place that allow you to reach your intellectual property protection further. You can find international intellectual property protection for designs, trade marks and patents. Additionally, you can use the help of NZCS for border protection against counterfeiters. If you need help with any international intellectual property concerns, our experienced IP lawyers can help. Call 0800 005 570 or fill out a form online.

Frequently Asked Questions

Do I need to have my intellectual property registered in New Zealand first to use any international intellectual property systems?

Generally, yes. You will need to have a trade mark, patent or design in place first, but not necessarily registered, before you can use any international systems.

What actions can I take if my brand or goods are counterfeited?

You can take legal action if somebody counterfeits your brand or goods. This can be a complicated process if the counterfeited items are exported from overseas. It is best to contact a lawyer in this situation. 

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