A trademark can be registered in countries overseas. A search may be carried before filing overseas as a trademark may be available for registration in one country but not in another. It is not unusual for businesses to trade in one country only and hence all markets must be viewed necessarily separately when picking brands. This trend has been fluctuating in recent years, and regional and international trademark registrations are now viable and favored by some businesses.
Ensuring that the mark is open for registration overseas is advised given considerable resources will be invested in branding, marketing, and if a dispute exists in an overseas market, sizable costs may be acquired to resolve a dispute, apart from the costs of rebranding. We handle trademark clearance searches, freedom to complete reports, and can advise your business before you commit resources with originating a new brand overseas.
If a New Zealand trademark has been filed, an overseas application can be filed within six months to claim the earlier filing date of the New Zealand application. Even when the six month period has passed, an overseas application may still be filed. However, the earlier NZ filing date cannot be relied on and the actual date of applying is used.
Regional trademark applications are becoming popular, and the Community Trade Mark covering all EU countries is a very popular option for NZ businesses exporting to Europe.
An international trademark registration regime, known as the Madrid Protocol, is now available to New Zealand businesses, and one registration can cover over 80 countries. For businesses wanting to protect a trademark in more than about 15 countries at the same time may face cost savings by considering this option. However, if you are only interested in securing your brand in a handful of countries, and with a restricted budget, developing an IP strategy to seek protection in only those countries of interest may be extra cost-effective and suitable in the circumstances. Some disadvantages include the high cost, and all eggs in one basket risk if a basic or main registration is attacked in one country, it can affect the whole registration. Moreover, any assignments of rights may be hard to register, mainly if the purchaser is a business in a non-member country of the Madrid Protocol system.
We are also IP experts at managing trademark conflicts in New Zealand and Australia for overseas applicants and can be contacted to assist parties with IP strategies for overcoming notifications of provisional refusal and trademark objections, and other proceedings with international registrations designating New Zealand.
Protecting your trademark rights
Once you have successfully received your full trademark registration, you must secure your trademark rights by: