Companies which accept online orders from Australia are being warned to tread carefully because they could be sued for infringing somebody else’s trademark.
Intellectual property expert, Theodore Doucas of Zone IP, an intellectual property consultancy in Wellington (with an office in Sydney), says that in his experience – as a consultant and a former Assistant Commissioner of Trade Marks – a quarter of New Zealand companies that have filed their trademarks in Australia have had different objections raised by the Australian Trade Mark Registry (IP Australia).
“That means up to 25 per cent of New Zealand companies which have their trademarks registered here may have their application with IP Australia fail because the mark is already taken or IP Australia do not consider it distinctive – it’s a huge and expensive problem for New Zealand companies who regard crossing the ditch as the next logical step in their expansion.
“Don’t expect any favours from IP Australia. They have different case law and examination practice which they must apply.”
He said it is important to remember that even a New Zealand company that is based here, but sells product in Australia over the Internet, is deemed to be trading in Australia and is at risk of falling foul of trademark laws.
“There’s been talk about a single application, but it’s just that – talk. The offices don’t seem to be working together. We have had a lot of success registering trademarks in Australia, but most companies don’t think of trademarks in Australia when they’re just starting out in New Zealand.
“In our experience, IP Australia is far more conservative than the New Zealand registry.”
Mr Doucas said he knows of New Zealand companies that have been forced to rebrand in Australia – an expensive process.
“One thing that start up companies who have aspirations in Australia should do, at the beginning, is undertake an availability search of their proposed mark in both New Zealand and Australia at the same time.
“You would be surprised by what marks may exist in Australia that don’t exist here – there’s more people, which means more ideas and greater variety. The official cost to register a trademark in Australia is 3 times more expensive than New Zealand, so it pays to get it right the first time,” he said.