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Trade marks are distinctive and unique signs for your business branding, linking you to the goods and services you provide. As such, they can be a significant asset for your business both nationally and internationally, particularly when growing your business. If you wish to expand your business to the New Zealand market, you should consider how you can maintain your trade mark here efficiently. Therefore, this article will provide some background and explain how you can use a foreign trade mark in New Zealand.

What Qualifies as a Trade Mark in NZ?

Trade marks are a form of intellectual property. They protect the unique signs that consumers use to identify your business and the goods/services it provides. In New Zealand, a trade mark can include:

  • words;
  • phrases;
  • numbers;
  • symbols;
  • logos;
  • shapes;
  • smells;
  • sounds; or
  • a combination of these.

New Zealand is similar to other countries in what can qualify as trade marks. Registering your trade mark is not mandatory, but you do gain stronger legal rights in the country if you apply to the Intellectual Property Office of New Zealand (IPONZ) for registration. With registered trade mark rights, you gain the exclusive right to:

  • use your trade mark;
  • commercialise your trade mark; and
  • determine how others can use your trade mark. 

Maintaining Trade Marks Internationally

When you register a trade mark in a particular country, its application and protection are limited to that country. So. when you register a trade mark in your home country, you only have associated trade mark rights in that country. Similar rules apply in countries across the world, including New Zealand. If you want to have trade mark protection in another country, you need to go through that country’s registration process.

However, there is also a more streamlined international system for trade mark registration, called the Madrid System. This system is a centralised trade mark filing and management process that allows for multiple registrations in different countries without filing separate applications. If the country you wish to register your trade mark in has signed up to this agreement, then you can designate it as part of one ‘umbrella’ registration based on the trade mark registered or pending in your home country. New Zealand is part of the Madrid System, so you can choose it as one of the countries you wish to register trade mark protection in. 

Trade Mark Essentials in New Zealand

Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.

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Registering Your Foreign Trade Mark in NZ

You can manage registering your foreign trade mark in New Zealand through the World Intellectual Property Organisation (WIPO), which will forward your application to IPONZ. Your trade mark will go through the same examination process that a local trade mark would, which includes:

  • finding any identical or confusingly similar trade marks that already exist in New Zealand;
  • determining whether your trade mark is not simply descriptive or praiseworthy of the goods or services it applies to;
  • assessing whether your mark is distinctive enough to distinguish between your goods or services and other traders; and
  • evaluating it against other absolute and relative grounds for refusal.

Therefore, it becomes crucial that you conduct a trade mark check in New Zealand before you apply to register, to see whether any trade marks similar to yours already exist here. It is a good idea to engage the help of a local intellectual property specialist to help you with this process. Additionally, they can help you respond if there are any complications with your application.

Managing Your International Trade Mark

One of the core benefits of the Madrid System is that once registered, your foreign trade mark receives the same powers and protections that a local trade mark would. Therefore, you can use your foreign trade mark just the same as a business using a New Zealand based mark would do in most cases.

Accordingly, this means that third parties can object to your trade mark, just as they can with local trade marks. They can lodge any oppositions through IPONZ. If this occurs, we recommend seeking New Zealand legal representation to assist you.

Key Takeaways

Thanks to international trade mark systems like the Madrid System, you can designate New Zealand as one of the countries you wish to have protection in when you register your trade mark. However, you need to meet the same requirements that a local trade mark would for protection, and it also means that people here can oppose your registration if they meet the necessary criteria. 

If you need help establishing your trade mark in New Zealand, 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

What benefits do I get from trade mark registration?

Trade mark registration gives you registered legal rights to use your trade mark, as well as control over how others use it. If third parties copy your trade mark without your authority, you can take legal action where appropriate.

Can I use a foreign trade mark in NZ?

If you are an overseas business, you can register your trade mark in New Zealand, taking advantage of international systems like the Madrid system. If you are a New Zealand business wishing to use a foreign business’ trade mark, you will need their permission with an appropriate arrangement.

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