Page 93 - Export and Trade

Intellectual Property

Registration also provides a public record • File your trade mark early
of ownership of the trade mark. Having your 6RPH FRXQWULHV VXFK DV &KLQD XVH WKH µ¿UVW WR
application on the national database of trade UHJLVWHU¶ QRW ¶¿UVW WR XVH¶ UXOH 7KLV KDV OHG WR µWUDGH
PDUNV DW WKH LQWHOOHFWXDO SURSHUW\ RI¿FH LV RIWHQ mark squatting’ where opportunists register well-
a deterrent to anyone else thinking of using the known foreign trade marks with a view to selling
same mark or a similar mark. It provides a strong WKHP EDFN DW D ODWHU GDWH $ QXPEHU RI KLJK SUR¿OH
legal position if you have to take action to stop foreign corporations and celebrities have faced this
another party from using your brand. problem in China.
The best way to protect your trade mark in Filing your trade mark application in another country
another country is to register it there. Trade early will reduce the risk of someone else claiming
mark laws are different in various countries, and rights to your trade mark. It will also be a lot less
the registration criteria, time frames, process expensive than litigating down the track.
and costs will differ by jurisdiction.
Note: a New Zealand trade mark registration • Not all brands are registrable
is only effective in New Zealand. It can however, To be registrable, a trade mark must meet certain
EH D XVHIXO LQVWUXPHQW ZKHQ LW FRPHV WR ¿OLQJ criteria. It must be distinctive and not directly
overseas. describe your goods or services. The same rules
apply to translated trade marks. A translated brand
may not be registrable as a trade mark if it is
descriptiveofthegoodsorservicesitisusedfor.
The Madrid Protocol
The Madrid Protocol (or The Protocol to the • Get the right protection
0DGULG $JUHHPHQW LV D SURFHGXUDO WUHDW\ WKDW 6RPH RYHUVHDV WUDGH PDUN RI¿FHV DFFHSW WUDGH PDUN
establishes a centralised system for international applications for words, logos, shapes, letters and
registration of trade marks. It enables you combinations of these elements. If your trade mark
WR XVH \RXU 1HZ =HDODQG WUDGH PDUN WR ¿OH contains multiple elements such as a word and a
an international application and, in the same distinctive logo, you might want to consider separate
application, designate the overseas countries registrations for both.
where you need trade mark protection. This
eliminates the need to appoint agents in each • Record your licence
FRXQWU\ ZKHUH WKH DSSOLFDWLRQ LV ¿OHG ZKLFK If you are licensing your trade mark to someone
reduces the overall cost of protecting your else to use in another country, then the laws of that
trade marks around the world. The international country may require the licence to be registered
application and each designation take the original ZLWK WKH WUDGH PDUN RI¿FH 7KLV DOVR DOORZV WKH
¿OLQJ GDWH RI WKH LQWHUQDWLRQDO DSSOLFDWLRQ licensee to remit royalty payments overseas in
Currently, 114 countries are members of the foreign exchange. Make sure you understand the
Madrid Protocol, including countries that make implicationsof licensingyourIPbeforeyoudoso.
up a large percentage of world GDP and our top
VL[ WUDGLQJ SDUWQHUV &KLQD $XVWUDOLD 86 -DSDQ •Enforce your rights
South Korea, Singapore and the European Union. Once your trade mark is registered, take appropriate
The list is rapidly expanding. steps to enforce it. This is where an IP specialist
As your overseas presence expands to new will be able to advise you on enforcement options.
countries, provided those countries are also In New Zealand, the Customs Service will actively
members of the Madrid Protocol, you can use the prevent the import of counterfeits. Some countries,
system to extend your trade mark protection. such as China, go one step further and actively
Some of the countries well known for producing prevent the export of counterfeits made in their
counterfeit products are also members of the country.
Madrid Protocol so your international registration Consider using a watching service in key
can help you combat the distribution of markets. Watching services are highly effective
counterfeit products around the world. monitoring services that can enhance your existing
brand protection and/or keep you aware of your

NZ Export & Trade Handbook 2018 91