Kiwi threat to unprotected trademarks

Clothing manufacturers are failing to realise the risk of offshore brand exploitation with many wrongly believing their Australian trade mark protection applies in nearby markets such as New Zealand
According to fashion industry lawyer James Cameron, of McCullough Robertson Lawyers, many manufacturers are unaware of the trade mark risks in trans-Tasman trade - a mistake that could prove costly for their brands.
"To many in the TCF industry, New Zealand can seem like a part of Australia but it has to be viewed in the same way as any other offshore market," says Cameron. "It really is a critical error to regard New Zealand as another Australian state."
Cameron says entities expanding their brand into the New Zealand market had to remember to protect their trade marks by registering them in New Zealand. The process was doubly important because it helped traders avoid infringement of a New Zealand trader's registered trade mark.
"Trade mark registration in New Zealand is particularly crucial because it's a country that so often becomes a part of the extended distribution network. Many Australian companies have a rep in New Zealand, even if they are yet to sell products there."
Cameron says there are several ways to help manufacturers ensure brand protection in New Zealand. These include:
Australian TMs
While your Australian trade mark gives you protection here, other countries including New Zealand don't recognise that protection. Use of a brand without registering the associated trade marks can have unwelcome consequences, particularly if other traders infringe those marks. It is also very important to ensure you don't infringe another trader's overseas marks.
Cheaper in NZ
Not only is the exchange helpful but the government fees for having a trade mark registered in New Zealand are much lower. It costs only NZ$100 per class as opposed to up to AU$450 per class in Australia, both of which give you a renewable 10 years registration.
The law is always changing
New Zealand recently introduced the new Trade Marks Act 2002 so you may wish to seek legal advice on any technical issues under New Zealand law with your trade mark application.
Intention is enough
Although most people associate trade marks with products already in the marketplace, it is possible to register a mark in relation to goods that you intend to sell in the near future. In Australia and New Zealand you must have a real intention to use the trade mark within three years. If you do not use the trade mark within that time, or some later continuous three year period, the trade mark may become vulnerable to a removal application by another trader.
Me First!
Just as the fashion industry needs to keep ahead of the latest trends, with trade marks it is also a case of "first in, best dressed". When you get around to lodging your trade mark application, if a similar mark has already been applied for you may have to wait in line to find out if it will be accepted.
If you do have a greater reputation and more significant market share you may be able to oppose a prior application but this is a costly and unpredictable process. The only way to jump the queue is if you have previously lodged an application in a convention country and use that application's priority date within six months. Fortunately, Australia is such a convention country.
Cameron says the main point to remember is trade mark protection has to be sought as soon as a trader began considering branching out into New Zealand and preferably even before any stock is exported for sale in New Zealand.
"I have seen Australian trade mark owners go on holiday to New Zealand and discover someone trading under their identical trade mark. Unfortunately, without getting in first with a registered trade mark in New Zealand, there is often little that can be done to stop the New Zealand trader from continuing to use your trade mark," he says.