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Wherever you intend to expand your business, you must take the appropriate measures to protect it. For instance, obtaining trade mark registration in Australia is an excellent way to protect your brand and distinguish your goods and services in the marketplace. However, it is essential to note that your Australian trade mark registration does not automatically give you protection in overseas countries such as New Zealand. This article will explain how you can use your Australian trade mark in New Zealand and other countries overseas.
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Registering a Trade Mark in Australia
You may already be familiar with applying for a trade mark in Australia. Once IP Australia has accepted your trade mark application and you receive your certificate of registration, your trade mark will be registered for ten years. During that time, you will have the exclusive right to use your trade mark with the goods and services you listed in your Australian application.
However, it is essential to note that your Australian trade mark registration does not automatically give you rights to use and enforce that trade mark overseas. It only provides trade mark protection within Australia.
Can I Use My Australian Trade Mark in New Zealand if I Am Trading in New Zealand?
Technically, you can use your trade mark in New Zealand. Although, you will not have the same legal protection over your trade mark as you do in Australia if you do not obtain separate trade mark registration in New Zealand.
Trade marks operate on a country-by-country basis. So, you must lodge an application in each country you want to have trade mark protection. This means if you plan to trade overseas and want trade mark protection, you will need to apply for a trade mark application in that specific country.
Further, if you are trading in New Zealand (whether physically or through online services) you will have to lodge a separate application with the Intellectual Property Office of New Zealand (IPONZ). IPONZ is the government agency that processes and examines trade mark applications in New Zealand.
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Registering a Trade Mark in New Zealand and Internationally
There are two ways to register your trade mark internationally, including filing your trade mark application:
- through the Madrid Protocol via the World Intellectual Property Office (WIPO); or
- directly with the country you want trade mark protection in.
The best path depends on your circumstances, budget, and future business plans. A trade marks lawyer would be able to advise you on the best option to take for your business.
Madrid Protocol vs Direct Application
The Madrid Protocol is an international filing system where you can file a single application to WIPO based on your home application (i.e. your Australian trade mark application).
When filing through the Madrid Protocol, you can nominate the countries you wish to apply with. WIPO then sends your application to the relevant intellectual property office in each country you have listed to assess your application.
Filing through the Madrid Protocol may be a good option if you want to protect your trade mark in several countries or if you plan to expand your business internationally within the next year or so.
For example, filing through the Madrid Protocol will likely be more cost-effective and efficient if you want to expand your business to New Zealand, Canada, and the EU.
However, filing through the Madrid Protocol might not always be the right option for you. This could be because:
- you only want to file in one country overseas; or
- a country that you want to file in is not a party to the Madrid Protocol and only accepts direct applications; or
- you want to file overseas as soon as possible.
There are about 120 countries that are party to the Madrid Protocol, and New Zealand is one of them. But it might be more cost and time effective to apply directly to IPONZ instead of going through WIPO.
Key Takeaways
An Australian trade mark registration does not protect your trade mark overseas. Trade marks operate on a country-by-country basis, so you must apply for trade mark registration in each country you will use your trade mark in. If you wish to expand your business overseas, you can apply for trade mark protection either by applying through the Madrid Protocol or applying directly to IPONZ.
If you need assistance preparing and filing your trade mark application in New Zealand, our experienced intellectual property lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
Your Australian trade mark only gives you protection in Australia. Whilst you can technically use your trade mark in New Zealand, it will not have the same legal protection or rights as your Australian registration. You must obtain trade mark registration in New Zealand to obtain trade mark rights and protection there.
You can file a trade mark application directly with IPONZ. Alternatively, if you wish to file for trade mark protection in other countries in addition to New Zealand, you may wish to file through the Madrid Protocol.
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