Cross the Ditch with Your Brand: How Australian Businesses Can Benefit from Registering Trade Marks in New Zealand

If you own a registered trade mark in Australia, have you considered expanding your legal protections to New Zealand?

Australians have long enjoyed a friendly rivalry with our besties ‘across the ditch’, but if you have a business, you wouldn’t feel quite so gracious if a savvy competitor there got the jump on your hard-earned reputation (intentionally or coincidentally) because you didn’t have the same watertight security for your brand in New Zealand as you do in Australia.  In fairness, we don’t see a lot of ‘bad faith’ filings with our neighbours in New Zealand, but, where viable always best to prevent the headache of that occurring to your brand.

Remember, registration of a trade mark in Australia is territorial so it does not automatically give you rights in New Zealand or any other country (although this does cover protections in a number of regions such as the Keeling Islands, Christmas Island, Norfolk Island and Nauru).

MMW Trademark Services’ years of experience working with businesses across the spectrum of industry have taught us that Australian businesses can benefit significantly from registering trade marks in New Zealand.  And the process is generally very reasonable. 

Is trade mark registration in New Zealand similar to Australia?

Both countries have similar trade mark registration processes (although there are some differences) and both operate on the ‘first-to-use’ principle.  Other jurisdictions are classified as ‘first-to-file’ in terms of trade mark ownership.

This can mean that if you have used your trade mark in New Zealand without registering it, you may have the opportunity to demonstrate common law rights to that mark.  

To learn more about this, have a read through this article on the differences between first to use vs first to file countries.

How easy is it to register a trade mark in New Zealand?

Every country has its own domestic laws which govern trade marks and it’s not possible to simply ‘extend’ a trade mark from one jurisdiction to another.  That means that a business which has a registered trade mark in Australia has no automatic legal rights over that mark if it were to expand operations into New Zealand.

Given our close proximity to New Zealand together with the growth of e-commerce and cross border trade and the logistical ease with which Australian businesses can transact across the ditch, it makes sense to protect your valuable intellectual property through the trade mark registration in New Zealand.

If you already own a registered trade mark in Australia, registering that same or very similar trade mark in New Zealand is generally quite straightforward and affordable (presuming your trade mark is available to register in New Zealand).   You can also still apply to the New Zealand governing body if you have filed your trade mark application in Australia but haven’t yet had confirmation of registration. 

You can do this by either:

  1. Applying directly through the Intellectual Property Office of New Zealand (IPONZ) (this is recommended if NZ is the only country of interest, or, if you wish to file for a trade mark that is not identical to your Australian trade mark)
  2. Via the Madrid Protocol (this is recommended if you wish to apply for trade marks in multiple countries which are signatories to this convention)

How does an Australian business benefit from having a registered trade mark in New Zealand?

Australia and New Zealand have long enjoyed a close trading relationship and the proximity between the two nations has made it easy for many enterprises to trade in both areas.  However, the rapid rise of globalisation and ecommerce has blurred traditional borders and heightened competition for consumer attention and their custom.

At MMW Trademark Services, we will often recommend that our clients consider registering their trade marks in New Zealand as well as in Australia for the following reasons:

  • it provides the registered owner the right to use the trade mark in New Zealand for the nominated goods or services
  • It provides statutory protection against unauthorised use of a mark in New Zealand
  • It gives enforceable rights against infringement allegations
  • It instils confidence in your reputation if you expand across the Tasman
  • It protects against goods or services that have the same or a deceptively similar mark from entering the New Zealand market
  • It sends a strong and clear message to competitors that your intellectual property belongs to you and that you can enforce your rights through the NZ legal system

Let us help you

If you’d like to register a trade mark in New Zealand, MMW Trademark Services can help.  We can guide you through the registration process to ensure your valuable IP asset has comprehensive legal protection across the ditch.

Our friendly team of professionals includes highly regarded trade marks attorney, Jacqui Pryor, who is widely experienced in all matters concerning trade mark law in Australia and international trade mark registration. We would welcome the opportunity to review your unique circumstances so that you can make informed decisions about protecting your brand.

Please call our friendly team on 03 8288 1432 or contact us via our website for a competitive quote on all trade mark related services.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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