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Your business’ branding is how your customers identify and remember you. Therefore, you must protect these unique aspects of your business where you can. Registering a trade mark is one method of protection, but your trade mark’s scope is limited to the country it is registered in. Therefore, this article will provide some background and explore whether you need to register a trade mark in all countries.

What is a Trade Mark?

A trade mark is a unique identifier for your business. It serves as a “badge of origin” for your business and the goods and/or services it provides, allowing customers to identify your business as their source. As a result, it can form an integral part of your branding and marketing strategy for drawing customers. 

A trade mark can include:

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

For instance, businesses will often register a trade mark to protect their business name, logo, or product names.

In New Zealand, you do not necessarily have to register your trade mark to gain the relevant ownership rights. However, registration makes your ownership much easier to prove, and your intellectual property rights will be much stronger. You will find a similar situation in most countries, and registration means it will be easier to stop third parties from copying or using your trade mark, or one similar to it.

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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Trade Mark Registration Rights

In New Zealand, you can register a trade mark with the Intellectual Property Office of New Zealand (IPONZ). You submit your application to them, which involves:

  • conducting a search for other similar or identical trade marks;
  • specifying the goods and/or services your trade mark applies to;
  • categorising those goods/services into their respective classes;
  • submitting your application through IPONZ’s online portal;
  • waiting for IPONZ’s response; and
  • dealing with any objections or third party oppositions.

This process is specific to New Zealand, and once registered, you become the registered owner of your trade mark. As a result, you have the exclusive right to:

  • apply it to your registered goods and services for labelling/packaging purposes;
  • use it in your advertising and promotion;
  • prevent others from using your trade mark;
  • access both criminal and civil remedies for trade mark infringement;
  • apply it to your business’ branding;
  • license your trade mark to other business in return for compensation;
  • sell the goods or services registered under that trade mark; and
  • otherwise profit from or commercialise the trade mark.

However, note that these rights only apply in New Zealand. If you want to take advantage of these rights (or similar ones) in other countries, you need to register your trade mark in those countries.

Registering Your Trade Mark Internationally

If you wish to register your trade mark internationally, there are two ways you can do so. These are:

  • filing a single trade mark application using the Madrid System; or
  • filing separate trade mark applications through each country’s local IP office.

Both approaches have pros and cons, and one may suit your situation more than the other.

The Madrid System refers to international trade agreements that New Zealand is a part of. This system aims to streamline trade mark registration globally. If you have an existing trade mark application or registered trade mark in New Zealand, you can file for an international application through IPONZ. They forward your application to the World Intellectual Property Organization (WIPO).

Crucially, you can designate multiple countries to register your trade mark with this system, as long as they are also party to the Madrid System and your trade mark meets their requirements. You will also have to pay the relevant trade mark fees.

Alternatively, you can file separate trade mark applications in specific countries using their local trade mark registration system. Notably, you do not have to rely on your New Zealand trade mark registration for this process.

Do I Need to Register a Trade Mark in All Countries?

For every country you designate in your international registration or whose local registration process you decide to undertake, your trade mark rights only apply within those countries. Following that, given the increasingly global nature of business, you may ask if you need to register trade mark rights to protect your brand in all countries.

To decide this, you need to be realistic about where you will likely do business using your trade mark. For instance, if you are an eCommerce business that ships your goods globally, it may be a good idea to register trade mark rights in the countries you ship to. Therefore, processes like the Madrid System may come in handy here.

An experienced trade mark specialist can help you determine your international plan for protecting your trade marks, and how that plan may progress and adapt in the future.

Key Takeaways

If you register trade mark rights in New Zealand, those rights only apply here. However, you can also register trade mark rights internationally. When deciding where to do so, you need to be realistic about where your business will sell your goods and/or services and where it may do so in the future.

If you need help with your international trade mark plan, 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 is a trade mark?

A trade mark is an intellectual property right that refers to a mark or sign that distinguishes your business from others. This usually forms a part of your branding, such as your business name or logo.

Can I register a trade mark internationally?

If you want to register your trade mark internationally, you can do so in multiple countries using the Madrid System. Alternatively, you can register through each country’s local IP office.

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