Broadening your Horizons? How to register your Trade Mark Internationally 20 Dec 2018

Applying for a trade mark with IPONZ will only protect your company mark in New Zealand. If you are considering protecting your trade mark in other countries, you can use an international trade mark filing system called the Madrid Protocol. This system can use your original New Zealand application as a base to apply for your trade mark in as many as 119 participating countries.

This application is called a ‘New Zealand Office of Origin’ trade mark and requires only one application, one set of fees, one designated place to update and maintain your application and one global renewal date. As a preliminary step, it might pay to see whether a trade mark the same as, or similar to yours has already been registered in other countries. You can search the International Trade Mark Register here.

While registering your trade mark in a number of different countries might be relatively straightforward, it is by no means cheap. In fact, registering your mark in all of the 119 Madrid Protocol participating countries will cost a little over $40,000. For this reason, it pays to be selective when deciding in which countries you will pursue your application – some registrations can cost a lot more than others. For example, applying for a trade mark in Turkey will cost just over $100, but a trade mark application in Uzbekistan will cost you almost $2,300. You can access a full breakdown of the relevant costs in each country here.

It may also pay to investigate any special requirements a country you intend to register your trade mark in might have. For example, registration in the United States of America requires the additional signing of a Declaration of Intention, while registration in the European Union requires the applicant to designate a second language (French, German, Italian or Spanish) in which contesting parties can challenge your application.

You can find out more about these specific requirements, as well as how to apply for an international ‘New Zealand Office of Origin’ trade mark more generally here.

Should you need any assistance with these, or with any other Commercial matters, please contact Kris Morrison or Steven Moe at Parry Field Lawyers (+64 3 348 8480).

For a more general overview of registering a trade mark, please see our original article here.