Intellectual Property

International Brand Protection

on Thursday, 16 June 2016. Posted in Intellectual Property

Once your business has an online presence your brand is global.  Even if you only accept bookings from New Zealand it is highly likely that awareness of your brand will extend to other countries. If you don't take steps to protect your brand internationally someone else in another country could start using your brand, damaging your business, and there may be very little you can do about it. 

Registering your brand as a trademark gives you the exclusive right to use it in relation to the goods and services you register against.  It is much easier to protect a registered trademark than an unregistered trademark in the courts should it come to an argument.  It can reduce what could otherwise deteriorate into a court case costing tens of thousands of dollars into a short exchange of letters.  Most infringers walk away when they are challenged by the holder of a registered mark.  Even if they persist, the complexity and therefore the cost of taking legal action is greatly reduced. 

This is why businesses elect to spend a little money now to register their mark to avoid having to spend a great deal of money later should a dispute occur.

It is also important to take into account that the are different systems in different countries.  In New Zealand use in the market can be enough to give you rights to that mark.  However, in some countries it is the first to file who is able to register the trademark.  This means it can be dangerous to do promotional work in these countries before your trademark application has been filed in that country.  You run the risk that your mark will be noticed and registered by a squatter blocking your use of your mark in that market altogether. 

You will need to think about what countries are important for your business. Which countries are you already trading in and which countries are you likely to be trading in in the near future? Then you should research those countries.  This should involve conducting some basic market research and trademark searches to make sure that no one else has registered or is using the same or a similar mark in respect of goods or services similar to yours.  Then you can consider applying in those countries.

However, not all countries have the same requirements for registering a trademark.  And language difficulties also cause some issues.  For example, in China it is possible and advisable to register transliterations.  These are the most likely equivalent the locals will use in their language to refer to your mark and could be in a completely different script. 

New Zealand has joined the Madrid protocol.  This means that you can apply in many other countries via one application through the Intellectual Property Office of New Zealand.  However, it is important to understand that you will need to comply with the requirements of a country before registration in that country will be granted.  It can therefore be more productive to handle registration in some countries directly using local advisors from the outset. 

Protection requires ongoing management.  It is important to always remember what you have registered when reviewing or revising your branding.  A revised brand may require a whole new set of registrations and this needs to be taken into account and planned for. 

In addition to trademark protection there are a number of practical on-line branding steps that can be taken to better protect your brand.  Examples of these are registering domain names and social media accounts using your brand. 

For more information or assistance contact

John Ferner

DISCLAIMER

This information is intended to be general in nature.  You are strongly recommended to seek your own legal advice in relation to the matters dealt with here.

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