IP is a valuable asset that can support you when doing business overseas. An Australian patent, trade mark, design or plant breeder’s right does not secure your rights outside of Australia. You should consider IP protection in the countries that you are planning on doing business, including manufacturing, or selling products online.
Please note, IP registration and protection can be a complex process, especially in an international context. It is recommended that you seek advice from an IP professional.
New Zealand has a population of around 4.9 million, is Australia’s sixth largest two-way trading partner. In 2017-18, two-way trade in goods and services between Australia and New Zealand was valued at A$28.3.4 billion. English is the most widely used language of New Zealand.
IP protection in New Zealand
Intellectual property rights are overseen by the Intellectual Property Office of New Zealand (IPONZ).
Obtaining IP rights in New Zealand allows for protection of those rights in New Zealand, Tokelau, the Cook Islands and Niue, with the exception of trade marks, which only extend to New Zealand.
An address for service in New Zealand and a local agent or attorney is generally required when seeking IP registration, unless using the services of a registered trans-Tasman Patent Attorney in Australia or New Zealand.
New Zealand is a member of international agreements for the protection of IP rights as administered through the World Intellectual Property Organization. See below for further details.
- Trade mark applications can be filed directly with IPONZ, or made through the Madrid System for the international registration of trade marks. Applications can be submitted online.
- When deciding on whether or not to enter New Zealand with your trade mark (and ideally before you apply for a trade mark in Australia), you should consider two things when applying for an international application through the Madrid system.
- Firstly, you may wish to search the Global Brands Database to make sure your chosen trade mark is available to be registered.
- Secondly, acceptable claims for goods and services vary across the world. Consider consulting the Madrid Goods and Services Manager database, which outlines what claims are acceptable in various jurisdictions globally.
- While English is the most widely used language, a number of other languages are used. Applicants using word elements in their trade marks may need to consider protecting translations and transliterations. Registration of a mark in the Roman alphabet is not sufficient to protect the transliterated version of that mark in New Zealand; the transliterated version must also be registered separately.
- Like Australia, New Zealand has a “first to use” rule for obtaining trade mark rights. This means that the first person to use a trade mark in New Zealand will generally have superior rights to a person who files a trade mark application later.
- Unregistered trade marks may, in some cases, be protected under common law in New Zealand. However, a registered trade mark provides statutory protection which offers significant advantages in trade mark disputes.
- A trade mark registration is valid for 10 years and may be renewed indefinitely for successive 10 year periods upon payment of fees.
- Trade mark registrations may be removed from the register if they are not used within three years of the date of registration and any consecutive three-year period thereafter.
- A trade mark’s validity can generally no longer be challenged after seven years from the initial registration date.
- There are other circumstances under which a trade mark may be challenged, cancelled or removed. Please check the relevant requirements prior to application.
- A single patent attorney regulatory regime between Australia and New Zealand came into force in 2017. This regime allows an address for service of a registered trans-Tasman Patent Attorney in Australia or New Zealand.
- Applications may be made directly to IPONZ through an Australian patent attorney or can enter through national phase entry via the Patent Cooperation Treaty (PCT). Applications can be made online.
- New Zealand excludes a computer program “as such” from patent eligibility.
- New Zealand provides protection for “patents of addition”. These are improvements in or modifications of an invention forming the subject of an earlier independent patent or patent application. These are granted for the remaining term of a main patent.
- There is a 12-month grace period for limited public disclosure such as unauthorised disclosure or reasonable trial of the invention. There is also a six-month grace period for disclosures at prescribed exhibitions.
- Patent protection is for up to 20 years from the date of filing.
- The Global Patent Prosecution Highway (GPPH) may be used by Australian applicants to speed up the examination process for corresponding patent applications filed in New Zealand
- Applications may be made directly to IPONZ and can be submitted online.
- There is no legal obligation to mark articles to which the design is applied. However failure to mark the article can afford an infringer with a defence of innocent infringement.
- Protection is available for a five-year period. This may be extended for two further five-year periods, upon payment, for a maximum protection of 15 years.
- Like Australia, copyright arises automatically at the time of creation of an eligible work. There is no formal system for the registration of copyright in New Zealand; however, inclusion of a copyright statement on a work will inform others that the work is subject to copyright protection.
- The term of protection varies on the type of work. In general, most published works are protected for the life of the author plus 50 years.
- Applications may be made directly to IPONZ and may be made online.
- New Zealand has strict quarantine requirements. Seed samples will need to be cultivated by a relevant agent in New Zealand and mailed to a receiving station. In most cases, plants imported into New Zealand will be required to undergo inspection. It is therefore important for intending applicants to import specimens into New Zealand as early as possible.
- Rights can be obtained in all plants except algae and bacteria.
- Certain varieties are evaluated by central growing trials which have strict growing seasons. Check the IPONZ website for application due dates.
- Plant varieties can be protected for a period up to 23 years for woody plants and 20 years for all other plants.
- Geographical indications (GIs) are currently protected under legislation and the common law tort of passing off. GIs may also receive protection as a registered certification or collective mark.
- However, GIs can be registered for both wines and spirits under The Geographical Indications (Wine and Spirits) Registration Act 2006. The Act creates a register and provides a regime for registering place names, in appropriate circumstances, as GIs for wine or spirits. The registration of a GI is effective for five years from the date of registration and can be renewed indefinitely for successive periods of 10 years.
Enforcing your IP rights in New Zealand
It is your responsibility to protect your IP. You should actively monitor the marketplace for any unauthorised use of your IP.
IP law is complex. If legal action is necessary, then you should consult a legal professional who specialises in IP law.
Doing business in New Zealand
Before entering the business market in New Zealand, there are a number of factors to take into account including culture, politics and business etiquette.
You can start by taking a look at the extensive information about doing business in New Zealand on the Austrade website.
- Madrid System
- Patent Cooperation Treaty
- DFAT – New Zealand Country Brief
- Export Council of Australia
- Professional advice - If you are considering exporting to New Zealand, it is recommended that you contact an IP professional experienced in New Zealand IP law and trade to advise on local IP, customs and other laws regulating imports and trade in New Zealand. Australian IP professionals can facilitate this contact.