Registering Trade Marks in New Zealand

The New Zealand market is very similar to Australia.  Australia is New Zealand's closest trading partner and there is a high degree of free trade between the two countries.  Many Australian trade mark owners find that the New Zealand market is complementary to Australia and that New Zealand is a logical and natural expansion point for use of their trade marks.  As such, many trade mark owners will now search and register their trade marks in both countries simultaneously, to secure access to the New Zealand market.

The advantages of registering Trade Marks in New Zealand

Registration of a trade mark in New Zealand provides a number of advantages.

  1. Automatic protection. Without registration you cannot prevent unauthorised use of a mark unless it can be shown that reputation exists in the mark and the unauthorised use is misleading or deceptive. Proving these elements can be a costly and an uncertain process.
  2. Nation-wide protection. Registration gives rights throughout New Zealand, even before the trade mark has been used. Rights to trade marks which are not registered are generally limited to the area in which the reputation exists.
  3. Defensive protection. Registration will provide a statutory defence against allegations that use of the registered mark infringes any other trade mark registrations.
  4. Border protection. Registration of a trade mark can provide a basis to prevent unauthorised goods bearing the same or similar mark from even entering the New Zealand market, in conjunction with the New Zealand Customs Service.
  5. Cost effective enforcement. Registration of a trade mark lets third parties know the trade mark is taken and can block registration of deceptively similar trade marks by others.

Protecting Trade Marks in Australia and New Zealand together

Many trade mark owners will now search and register their trade marks in Australia and New Zealand simultaneously. We have developed a strategy for those who seek registration in both countries to help with examination and to streamline the process.

Our experience and knowledge of New Zealand trade mark law combined with more than 100 hundred years of experience in Australia ensures our clients can rely on us to manage their trade mark portfolio in Australia and New Zealand. We encourage you to get in touch or contact Nick Holmes to see how we can help you.

Davies Collison Cave has practiced directly in New Zealand for over 15 years, and is in the top 10 trade mark filers in the country. We also provide New Zealand trade mark searches and a wide range of related services to protect our client's trade marks in New Zealand, including trade mark opposition and removal proceedings and management of trade mark portfolios.