I have a New Zealand trade mark – what about exporting?

Getting your trade mark registered in New Zealand is not the end of the story if your business is exporting or will export their goods or services. IP rights are territorial, meaning New Zealand trade marks only give you protection in NZ, and so on. You need to apply in every country in which you want trade mark protection.

You can apply overseas any time, but you can claim rights (priority) from the filing date in New Zealand if you file your overseas application within 6 months of your New Zealand application. Priority is important because as with other forms of IP, trade marks are on a “first come first served” basis.

It’s also important to know that even if your trade mark is registered in New Zealand, another party could be the first to use or register the trade mark (or a similar trade mark) in another country e.g. Australia. It can be hard to predict whether an IP office in another country will accept your trade mark application.

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How do I apply overseas?

Trade mark protection is an important investment. Rather than just copying the details of your New Zealand registration, it’s work checking with an IP lawyer/patent attorney that your New Zealand trade mark gives your export business adequate coverage.

Many countries have specific requirements for their applications which means it is best to use an overseas agent (IP lawyer or patent attorney) in that country.

There are two options – first, filing country by country as the markets become of interest, or secondly, filing what is called an International Application. A “Madrid” application is a great way to streamline your trade mark portfolio. Once you have a New Zealand trade mark application or registration, you can file an International Application which can be the pathway to registration of your trade mark in up to 125 countries. Each country’s IP office will then examine the application.

Whichever option you choose, it is likely that you will need to engage an overseas attorney to secure the registration of your trade mark. Your New Zealand-based IP lawyer/patent attorney will have relationships with attorneys around the world and can assist you with this.