Do Australian Trademarks Automatically Have Trademark rights in New Zealand?

Australian Business often consider New Zealand for expansion due to its logistically friendly geographical location. In general trademark registration is specific to each country, so it’s important to note that your registered Australian business name, domain and trademark will not automatically entitle you to trademark rights in other countries.

If you are considering expanding your business internationally, a search of the relevant Trade Mark office records will help outline the steps to registration and determine if your trademark can be registered in a particular jurisdiction.

Trademark laws in Australia and New Zealand

Australia and New Zealand recognise users of trademarks, as well as trademark registrants, essentially this means if you have been using a mark without registration and someone else registers a similar or same mark you may still be able to demonstrate your rights to that mark.

If you are registering in a country that follows the ownership rules of ‘first to file’ such as China, you will need to be the first to file an application to gain ownership as they provide rights to the first person to file the trademark in that country.

The advantages of Registering a Trademark in New Zealand

Registering your trademark in New Zealand is a simple process to follow and provides you with international brand protection and the below benefits:

  • Once you have trademarked the specified good and or services you are granted exclusive rights to use of that trademark.
  • You have the rights to stop unauthorised use of your trademark by another party in New Zealand.
  • Trademark registration gives you statutory protection against any infringement allegations.
  • You are able to stop unauthorised goods bearing a similar or identical mark from entering the New Zealand market with the support of and through the New Zealand

Customs Service system

Registering and protecting your trademark in New Zealand is important. Services like Mark My Words Trademarks Services are able to assist with filling an international trademark application and help you identify suitable avenues for your business. If you are based in Australia, appointing a local representative in the country of interest that you intend filling in, is often recommended. It’s important to note that simply filling first is not always a guarantee of registration, should there be a similar trademark that has been filed before yours.

The Intellectual Property Office of New Zealand or IPONZ will not just accept evidence of prior use only to successfully achieve registration. Click here for further details regarding trademark registration. Applying later will require you to provide evidence of honest and concurrent use for consideration. In some cases, unregistered trademarks can be enforced under New Zealand common law which is why we encourage sufficient research and planning prior to submitting your application.

Sky Tower SKYCITY Auckland
Sky Tower in SKYCITY Auckland, New Zealand

The difference in New Zealand registration processes

The Intellectual Property Office of New Zealand or IPONZ is the New Zealand government body responsible for registering intellectual property rights as well as patents, designs and trademarks.

New Zealand and Australia share similar trademark registration and protection processes and in comparison, to Australia the primary differences in registration are:

  • Registration and renewal fees are slightly cheaper in NZ.
  • Processing and examination times are usually shorter in NZ. The examination takes place within a 3-4-week period and trademark protection usually occurs at 6 months after filling, provided there are no objections.
  • The New Zealand Trade Marks Office does not charge registration fees, which is the same as in Australia, apart from a once-off upfront filing fee of NZ$150 per class of goods/services to register your trademark applies. This cost does not include fees should you have a trademark attorney facilitate this process for you.