Registering Trade Marks Overseas
Are you a New Zealand business that trades internationally? Do you sell online or in retail stores in other countries? If you do your trademark is probably important to your brand and credibility, and worthy of protecting here and abroad. In this article we will give you some practical steps to protect your IP overseas.
What is a trademark?
A trademark is a brand or sign that has distinctive qualities. It can be a name, signature, word, colour, logo or even a sound or smell. It must be capable of being represented graphically and distinguishing the goods or services of one person from that of another.
Why protect your trademark?
Registering a trademark places you in a better position to enforce your rights against others who may try to use it. It prevents someone from using or obtaining rights to use a brand or distinctive name that you have developed. A registered trademark is likely to add to the value of your business and be a valuable asset in any sale as well.
Why register it overseas?
Overseas registration offers similar benefits to registration in New Zealand; it protects against overseas competitors using the same or similar marks to capitalise on your brand attributes or to lure customers away from your products to theirs. If you are registered you have legal and exclusive rights to the trademark.
The good news is that you can register a trademark in 100 countries with a single application through the Intellectual Property Office of New Zealand (IPONZ).
Are you eligible?
A person or company is entitled to file an international trademark application if they are a national of New Zealand, domiciled in New Zealand, or an organisation with a real and effective industrial or commercial establishment in New Zealand. IPONZ automatically determines whether you are entitled based on the client type indicated in your client record.
Like many application processes, it’s a good idea to read about what’s involved before starting the process. There is excellent guidance on the IPONZ website to assist. We often assist clients with this. The cost involves varies depending on the country.
Complete the online application
If you are entitled to file and your basic mark is suitable, you can apply online. Some countries may require specific information; for example, when designating the United States of America you need to provide a signed MM18 declaration form. The European Union also has requirements around second language and seniority claim information. We can help you navigate these additional requirements.
How long does it take?
Timeframes for each country vary. In general if no refusal is raised within 12 to 18 months (depending on the country), your mark is deemed to be protected in that country. If you are refused by one of your designated countries, you will be notified. There may be an opportunity to respond to the refusal or opposition.
Maintaining your international registration
Don’t forget to maintain your registration at WIPO (World Intellectual Property Organization.
Other useful resources:
We have a number of other articles about trade marks. Read about how to properly classify and protect your trade mark, what a search and preliminary advice report is, and advice to avoid offending people with your trade mark.
Should you require assistance, please contact: Steven Moe stevenmoe@parryfield.com, Michael Belay michaelbelay@parryfield.com, Sophie Tremewan sophietremewan@parryfield.com or Yang Su yangsu@parryfield.com at Parry Field Lawyers.
