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Trade marks are valuable assets for your business, serving as a brand identifier that can make you stand out to your customers. They uniquely apply to your goods and services and can draw customers to your business. However, trade marks are only protected in the country you register them in. Therefore, if you wish to expand globally, you should consider where and how you will register your trade mark to have sufficient legal protections internationally. Therefore, this article will provide some background and explain how foreigners can apply for trade marks in New Zealand.

Your Options When Based Overseas

You may already have a registered trade mark in your own country. However, this protection does not apply internationally. Therefore, if you want to protect the trade marks of your growing business in other countries, you need to comply with their domestic laws when applying for a trade mark. New Zealand is no different. There are two options for registering your trade mark in New Zealand as an overseas business. They are:

  • applying directly through the Intellectual Property Office of New Zealand (IPONZ); or
  • applying using the Madrid System through the World Intellectual Property Organisation (WIPO).

Both result in you having registered trade mark rights in New Zealand, but one path may suit you more than the other.  

For instance, if you only want to register your trade mark in New Zealand, using our national system may be more appropriate.

How Trade Marks Work in New Zealand

Trade marks in New Zealand protect certain identifiers that link your business to the goods or services you provide. They can include:

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

For example, if you already have a registered trade mark to protect your business name in your own country, you could apply for similar rights in New Zealand. However, you should ensure that no one else has already registered something identical or similar, among other criteria.

Additionally, suppose you wish to apply using the Madrid System. In that case, you need to have an existing trade mark registration or application in your own country, which will form the basis of your international registration. Therefore, if you wish to use different branding here, this may not be the option for you. However, applying directly through IPONZ means that you can submit a new application with differing trade mark elements if you wish.

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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Applying Directly Through IPONZ

Before applying to register your trade mark in New Zealand, you must prepare your application appropriately. Clearly define the different elements of your trade mark, and the nature of the goods or services you wish for it to protect. 

Once you have determined the scope of your trade mark, you should conduct a trade mark search, including a general internet search of your trade mark and the IPONZ trade marks register. In New Zealand, your trade mark application might run into issues if:

  • an identical or “confusingly similar” trade mark is already registered or applied for;
  • it is descriptive and not sufficiently distinctive of your goods and services;
  • another party is already using your proposed trade mark here.

Therefore, conducting such a search is crucial to see whether any issues are likely to arise before applying. The more distinctive and unique your trade mark is, the more likely IPONZ will approve your trade mark application.

It would be wise to engage the help of a local trade mark specialist to conduct your search, or use IPONZ’s search and preliminary advice reporting service.

Other steps of the national registration process include:

  • categorising your trade mark’s goods or services into their relevant classes;
  • determining the owner of your trade mark; 
  • paying the relevant fees; and
  • applying through IPONZ’s online portal.

Once you apply, IPONZ assesses your trade mark according to their criteria. 

Applying Through the Madrid System

Applying through the Madrid System functions differently, but you still gain the same advantages in New Zealand as a national trade mark would. Generally, registering your trade mark in this way uses your existing trade mark in your home country. You can designate New Zealand as one country you wish to have protection in, alongside any others. WIPO manages this process, and to use this service, you need to either be:

  • a national of a member state to the Madrid System;
  • a permanent resident in a member state to the Madrid System, or
  • an organisation with a real and effective industrial or commercial establishment in a member state to the Madrid System.

However, your trade mark application will still go through an evaluation process, to see if it complies with our trade mark laws.

Key Takeaways

If your business is based overseas, here are a couple of ways of registering a trade mark in New Zealand. You need to choose one that suits your circumstances.

If you need help with applying for a trade mark from overseas, our experienced intellectual property 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 is a trade mark?

A trade mark is a kind of intellectual property right that protects something that identifies your business and the goods or services it provides. Common examples include your business name or logo.

What is the Madrid System?

The Madrid System (or Madrid Protocol) is an international trade mark filing and management system. This system allows you to register your trade mark in multiple countries through a single application. However, your trade mark still needs to comply with each country’s local requirements.

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