New Zealand Trademark Loophole, Local Companies Vulnerable

Zone IP (The Zone Corporation)
1 May 2012

New Zealand Trademark Loophole Leaves Local Companies Vulnerable

A loophole in New Zealand trademark law could leave some companies exposed, because current legislation does not allow the Intellectual Property Office of New Zealand to take prior use of a logo or slogan into account.

Intellectual property expert, Theodore Doucas of Zone IP, an intellectual property consultancy in Wellington, said one consequence might be that multinational companies moving into New Zealand could make life difficult for the locally owned businesses.

Where you have not registered your trade mark and another company has moved in and registers an identical or similar mark in New Zealand without you knowing, it could make registering your trade mark harder.

“If you have been using a logo or slogan for a while, but have not registered it as a trademark, you still have rights under common law and the Fair Trading Act. However, unlike in Australia, IPONZ does not take prior use into account when you apply to register the mark because the local legislation doesn’t allow for it.

“This means that any move local companies make to register their own trademarks – which they have been using for some years, or to challenge the newcomer – could end up costing them tens of thousands of dollars until it just isn't worth the battle anymore,” he said.

Companies which do not register their trademarks run the risk of somebody challenging it – or applying to use their brand – leaving them with the onus to prove ownership, and that could amount to having to leap over numerous and costly legal hurdles.

Mr Doucas said the ‘loophole’ is something that IPONZ should seriously look at, because globalisation meant cross border trade and overseas investment will continue to increase.

“By registering your trademark you’re putting your ownership on record. Other companies are then put on notice that you own the trademark in New Zealand .

“By registering your trademark early – it is not an expensive process – you can save a lot of money, time and stress,” Mr Doucas said.

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About Zone IP

ZONE IP is an intellectual property consultancy providing authoritative advice in trademarks, copyright and branding. ZONE IP is headed by a former Assistant Commissioner of Patents, Trade Marks and Designs of the Intellectual Property Office of New Zealand (IPONZ).

w: www.zoneip.co.nz

ENDS

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