Trans-Tasman IP protection: how to register a trade mark in New Zealand

Despite the recent decrease in travel due to COVID-19, we still live in the age of globalisation. It is not uncommon for businesses to expand trade to other countries, including our friendly neighbours in New Zealand. Trading across the Tasman may be particularly attractive if a travel bubble were to eventuate.

Trading in a new jurisdiction comes with a host of new challenges, but one factor that often gets overlooked is IP protection.

Businesses should consider the need to register their trade marks in New Zealand. Trade marks registered in Australia do not provide any trade mark protection beyond Australia’s borders. The good news is, compared to some other jurisdictions, the process of registering a trade mark is relatively easy.

There are two methods of registration that can be considered.

Direct Registration with New Zealand Intellectual Property Office (NZIPO)

Australia and New Zealand have similar trade mark regimes, making direct registration with New Zealand’s trade mark office the quickest and cheapest short term option for securing protection.                      

Pros of direct registration with NZIPO:

  • NZIPO offer a search and advice service for around $75AUD per class, where they consider the application and advise on any potential barriers to having the trade mark registered in New Zealand. The benefit of this is that NZIPO will inform of any possible objections prior to the applicant submitting the formal application, allowing any necessary changes to be made to the trade mark before lodgement.
  • Its typically quicker, depending on any objections that must be overcome.
  • It is cost efficient, as the only fees are those charged by the NZIPO themselves
  • Unlike some foreign countries, a New Zealand address for service not required by NZIPO, making it more accessible for businesses based in Australia to seek protection.
  • Direct registration allows you to have a different trade mark to what is registered in Australia, or you may even register in New Zealand without having an Australian trade mark registered.

Cons of direct registration with NZIPO:

  • Having to manage separate registrations in different countries, with different renewal dates.
  • No able to claim the earlier priority date of your Australian registration, which creates retrospective protection prior to your application (though limited to 6 months).

The Madrid Protocol

The alternative option is to register the trade mark through the World International Intellectual Property Office (WIPO) under the Madrid Protocol.

Pros of registration under the Madrid Protocol:

  • Easier if you have an existing trade mark registration in Australia.  Applications under the Madrid Protocol can be submitted via IP Australia, through the Agency’s eServices portal
  • Additional Madrid applications will be streamlined and centralised in the one location if you seek to extend the registration to other countries in the future
  • Reduced fees for expanding an existing international registration through WIPO into other jurisdictions

Cons of registration under the Madrid Protocol

  • Longer registration time. Applications can take between 12 and 18 months to complete, depending on NZIPO’s turnaround times.
  • Slightly more costly, as a once-off Basic Fee is payable to WIPO.

Regardless of the avenue you take, IP protection is an important investment to your brand abroad. Contact Griffin Legal today for tailored advice on which trade mark registration process is right for you and your business.

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