Business, Property & Finance

Guide to Protecting your Intellectual Property in a World Market

on Wednesday, 08 June 2016. Posted in Business, Property & Finance, Intellectual Property

Guide to Protecting your Intellectual Property in a World Market

Once your business has an online presence your brand is global. While your business may only trade in New Zealand it is highly likely that awareness of your brand has extended to other countries. If you don’t take steps to protect you brand internationally someone else in another jurisdiction could start trading using your brand and there would be very little your could do about it.

This guide gives you some tips on what steps you should take to protect your brand and other intellectual property in a world market.

TRADEMARKS

Registering your brand names and logos as trade marks gives you the exclusive right to use those brands and logos in relation to the particular goods and services which your registered trade mark is registered against. It is easier to protect a registered trade mark than an unregistered trade mark. If you would like to make sure that you have protection for your brand or logo in a particular country then registering a trade mark in that country is the best way to ensure you have exclusivity and brand protection.

Register at home – first you should register your brands and logos in New Zealand. While it does not provide you with any protection overseas, you can claim priority in other countries.

Check - If you are considering using a new brand or logo then it is recommended that you do a brand search in the countries where you think you want protection. This will involve conducting a number of checks and searches to make sure that no one else is using the same or a similar brand name in respect of goods and services which are similar to yours.

Identify key markets – think about what countries are important for your business and where you should ensure you have trade mark protection. Which countries are you already trading in? Which countries are you likely to be trading in the near future? Remember to cover countries where you manufacture your products. In some countries, attaching a trade mark which has been registered by someone else to goods manufactured for export can breach the registered trade mark, even if the goods will never be sold in the country of manufacture.

Different countries – different requirements – not all countries have the same requirements for registering a trade mark. For instance in the U.S. trade mark rights are based on actual use meaning that you must be able to demonstrate you are actually using the name while in other countries this is not required. In China it is possible to register a transliteration which is most likely the equivalent the locals will use in their own language to refer to your mark and could be in a completely different script. Your intellectual property lawyer will be able to help you understand the requirements for different countries.

Don’t wait – in some countries such as China it is the first to file who is able to register their trade mark. This means it can be dangerous to do promotional work in these countries before your trade mark application has been filed there. You run the risk that your mark has already been noticed and applications have been made by a third party to register it.

Madrid Protocol – the Madrid Protocol to which New Zealand is a signatory allows you to apply via one application through the Intellectual Property Office of New Zealand for registration in the other 85 countries which are also signatories. However, it is important to understand the requirements for each country.   An example of this is in U.S. where you cant register a trade mark in respect of food items.

New branding – new registrations – each time you create a new brand or logo you should consider how you are going to protect this intellectual property. Consider applying for trade marks in New Zealand and other countries which are strategic to your business.

TM vs ® – The tm symbol is used in relation to unregistered trade marks and is notice to every one that you are claiming branding rights to that mark and may put them off copying your branding. The ® is used in relation to trade marks which have been registered and provides notice to the world that the trade mark is registered. You should consider using the applicable symbol in relation to your trade marks as a way of demonstrating your brand equity.

Online protection – consider how you can protect your branding online – for instance by registering domain names, facebook and other social media accounts using your brand. But remember that different jurisdictions may have different requirements for registration of a domain name.

Culturally appropriate – does your brand make sense in another jurisdiction? Make sure that your brand is not culturally insensitive or offensive once it is translated.

PATENTS

Just like a trademark a patent will only provide you with protection in the country in which it has been registered. To get protection for your New Zealand patent in another country you will need to register in that country. There are a number of ways to register a patent in another country – via a single application, multi country application under the Patent Cooperation Treaty or a regional application.

  • Paris Convention – New Zealand is a signatory to the Paris Convention which allows you to file an application in other signatory countries based on your New Zealand application. Under the convention you have 12 months from the date of your New Zealand application to file your application in another convention country.
  • Patent Cooperation Treaty - New Zealand is a party to the Patent Cooperation Treaty which allows you to file an application for a patent in over 140 countries with just one application.
  • Regional Patent Application – this allows you to apply for a patent in a group of countries. The regions are the African Region, Arab Gulf States, Eurasia and Europe.

Non- disclosure – make sure you don’t prejudice your right to apply for a patent by disclosing details of your invention without a signed non-disclosure agreement in place.

We strongly recommend engaging the services of a Patent Attorney if you want to protect your patent overseas.

Copyright

In New Zealand you automatically obtain copyright protection in relation to any original work. There is no need to apply for copyright protection. In New Zealand copyright protection is unusually wide. For instance; copyright protection in the design drawings can also protect the three dimensional object from being copied. This unusual form of copyright protection does not apply in most other countries, e.g. Australia. In those countries you must apply for a registered design. However, there is a trap – if the object is manufactured prior to an application being filed in those countries this can block the design application. This can apply even if the manufacturing occurs in New Zealand.

International Conventions – New Zealand is a signatory to the Berne Convention for the Protection of Literary and Artistic Works, the Universal Copyright Convention and the Agreement on the Trade-related Aspects of the Intellectual Property Rights. Under these agreements any copyright works created outside these countries is given the same protection as a local work.. It is important to note that for some countries it is necessary to comply with certain formalities before copyright protection can be claimed.

Copyright notice/ © symbol – there is no need to provide any notice of copyright to be protected in New Zealand. However the © symbol is a common way of letting the world know that you have copyright in respect of a certain item. It can also be helpful to use it, if you want protection in some overseas countries. If you are going to use the © symbol then it is standard to use the symbol followed by the name of the owner and then the year of the copyright. For example; © Brookfields Laywers 2016.

Summary

Any business with international ambitions should consider its intellectual property protection overseas right from the beginning. This should occur before commercialisation commences overseas and indeed some protection overseas may be required before the product is commercialised in New Zealand. Failure to do this can mean that your rights overseas my be irretrievably lost.

For more information or assistance on protecting your intellectual property overseas please contact John Ferner, Commercial and Intellectual Property Lawyer on (649) 979 2153 or .

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.

© Brookfields Lawyers 2015 – All Rights Reserved

 

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