For a business looking to enter new markets abroad, becoming acquainted with local laws is a crucial step in gaining access and growing the business successfully. A particularly relevant legal procedure to expanding globally is registering a trade mark. This article outlines the trade mark process in three key overseas jurisdictions: the United States, New Zealand and South Africa.

Trade Mark in the United States

1. Classify the Trade Mark

A trade mark must be classified within a predefined class before being lodged. The US has multiple trademark classes including but not limited to Word Mark, Design Mark, Sound Mark, Scent Mark and Motion Marks. More classes of marks can be found on the U.S. Patent and Trademark Office site.

2. Lodge the Application

Applicants must demonstrate their good faith intention to use their trade mark for commercial purposed in the US. This application can be made by a foreign applicant so long as they have applied to register or registered a trade mark in their country of origin, as per s44 of the Lanham Act 15 AC.

3. Obtain a Filing Date

To obtain a filing date, applicants must provide their name, address, a clear drawing of the mark, listing of goods or services, the filing fee and a designation of a domestic representative. The designation of a domestic representative is required to bring that person or entity under US legal jurisdiction should a legal claim be made regarding the trade mark.

4. If the application is approved, the typical wait time for registrations is 12 months, providing there are no objections throughout the process.

Trade Mark in New Zealand 

1. It is recommended to undertake a search and preliminary advice report to determine whether your trademark meets the requirement of being distinctive and not descriptive

2. Determine the type of trade mark, most commonly word, image and combined (both word and image).

3. Decide Upon the Owner.

An owner can be a company, an individual, two partners, one or more company owners and other legal entities. Ownership can be transferred at a later date if desired.

4. Define the Specification

Specifying the trade mark involves outlining the goods and services you intend the product to be used for. This step also involves identifying the class of good or service. This is done on the website of the New Zealand Intellectual Property Office. If you have multiple classes, choose carefully as the lodgment fee is based on the number of classes in listed in the application

5. Ensure the Trade Mark isn’t Already in Use

Search the registry on the website of New Zealand Intellectual Property Office for any identical or confusingly similar trade marks.

6. Lodge your Application and Await the Outcome

7. There will be three months for interested parties to raise objections. After this, the trademark should be registered within six months.

Trade Mark in South Africa 

The South African system requires a separate trade mark filing for each trademark in each class. A prolonged process which can take up to 18 months, it involves the following steps:

1. Conduct a Background Search.

Take into account considerations such as whether the mark is ubiquitous or generic in your field, is a protected government emblem or if it carries any offensive connotations.

2. Lodge the Application Form

This can be done manually or electronically through the South African Companies and Intellectual Property Commission site.

3. Like New Zealand, there is a three month waiting period for any opposition to be voiced, after which it will be issued within six months. However, due to the typical examination times, it may take up to 9 months to reach this stage after filing. Registration must be renewed every ten years.

Key Takeaways

Although the trade mark registration process has some common features, there are slight jurisdictional variations that directly affect the outcome of an application. For further information about the technicalities of registering a trade mark abroad, contact a member of LegalVision’s trade mark team.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Anthony Lieu

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