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If you have a successful company in Australia, you may be wanting to expand your business to New Zealand. Unfortunately, there is no way to simply “extend” your Australian trade mark to New Zealand. You will have to register a new trade mark. This article explains the simple and relatively straightforward way to register a trade mark in New Zealand.
Methods for Registering a Trademark in New Zealand
The domestic laws of each country govern trade marks. This means that there is no one process to extent your Australian trade mark to other countries.
There are two methods for registering a trade mark in New Zealand when you already own one in Australia.
1. Direct Application in New Zealand
If you apply to New Zealand directly, your New Zealand trade mark does not have to match your Australian trade mark. This may be relevant if your business plans are different for each country.
Similar to the Australian Trade Mark Headstart application, there is an optional initial assessment available which informs you of whether your mark is likely to comply with New Zealand trade mark law. Before submitting your application, follow the steps below:
- determine whether you are going to apply for word, logo or a combined trademark;
- decide which entity will own the mark. Will you own it in your personal capacity or will a business own it;
- choose your specifications and classes. You’ll have to include a list of all the goods and services you currently provide or expect to provide, and list the class(es) that these fall under; and
- make sure that your trade mark isn’t already registered, applied for, or confusingly similar to an existing mark.
If you’re happy with your application, you can file and submit it. The New Zealand Intellectual Property Office will have an answer to you within 15 days. Once accepted, the registration process will take a minimum of six months. Keep in mind that there sometimes there can be objections from other companies. You may need a lawyer to assist in handling this if it arises.
2. Madrid Convention Application
New Zealand is a member state of the Madrid Convention which facilitates the registration of international trade marks. When you file, you can either pay directly in Swiss francs or to IP Australia in Australian dollars. To be eligible to apply, you must be either a:
- Australian national; or
- Australian permanent resident.
You must also
- own a real industrial or commercial establishment in Australia; and
- already have a registered trade mark in a member state.
This method is ideal if you want to apply for trade marks in multiple countries which are members of the Madrid Convention. You just make one application and pick which other member countries you also wish to register in.
If Your Australian Trade Mark is Not Registered
If you have lodged your Australian trade mark application within the last six months, but it as has not yet been registered, you can still apply. In fact, there are advantages in applying soon after you lodge in Australia. New Zealand is a member of the Paris Convention, which gives you the benefit of two relevant rules.
1. Priority Right
If you apply for a trade mark in a member state of the Paris Convention within six months of filing an application in your member state, the date of the subsequent application will be the same as the first filing date.
In effect, any other applications lodged in the interim period between your two applications will lose priority when you lodge your NZ application. This means that your trade mark will get priority over any other marks that could be considered identical or similar.
Keep in mind that this rule works both ways and may mean that other pending or registered trademarks will receive priority over your application.
2. National Treatment
Nationals of any member country enjoy the same advantages for the protection of their intellectual property as under their own national laws. This means that when applying for a trademark in New Zealand, the application is treated the same as if you were a New Zealand national. Further, if your trade mark is registered, you are afforded the same protection and legal powers as if you were from New Zealand.
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Key Takeaways
If you already own a registered trade mark in Australia, you can register a trade mark in New Zealand. The New Zealand Intellectual Property Office or the Madrid Convention are two avenues to apply for an NZ registration.
If you have applied for a trade mark in Australia in the last six months, you can apply for a trade mark in New Zealand and take advantage of the early priority date. This means that you are treated like your New Zealand application and Australian application was filed on the same day. If you have any questions about registering an international trade mark, get in touch with LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.
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