Kiwi companies trading online risk running foul of law

PRESS RELEASE
Zone IP (The Zone Corporation)
23 July 2012

Kiwi companies trading online with overseas customers risk running foul of foreign trademark laws

New Zealand companies that accept online orders from overseas countries, even rarely, are effectively trading in that country and are at risk of falling foul of its laws –particularly trademark legislation.

Intellectual property expert, Theodore Doucas of Zone IP, an intellectual property consultancy in Wellington, said trademarks cast a wide net because everybody has one and, for that reason, pose the most danger for Kiwi traders.

“Both the Internet and expanding cloud technology mean it is really easy, and becoming easier by the day, to achieve cross border trade, even for companies that may have had no intention of selling offshore.

“Suddenly there’s a hit on their website from, for example the United States, and an order isplaced. By fulfilling that order, you may now effectively be trading in theUnited States and subject to its laws – and the consequence aren’t always gentle.

“Fortunately New Zealand has finally adopted the Madrid Protocol which, when it likely comesinto effect in December this year, will make it far easier and cheaper to simultaneously register a trademark in multiple countries,” he said.

The MadridProtocol simplifies the process and cost of protecting trademarks internationally. More than 80 countries are signatories, including Australia, China, Japan, the European Union and Japan.

“In the past, if you wanted to register a trade mark overseas, you would have to pay fees tolocal lawyers, fees to their counterparts and the official fees of the trade mark body in that country – it was expensive and complicated.”

Mr Doucas said the Madrid Protocol offered a number of benefits that would facilitate offshoretrade, including the fact that a company only has to file one application internationally and pay one fee to the World Intellectual Property Office (WIPO).

This means:

• Companies can now achieve cost effective, protected expansion without prohibitive costs
• All trademarks would share a common renewal date, so nobody has to worry when, and which, country is up for renewal
• A single application and a single fee to all the overseas jurisdictions to which you want to apply via the World Intellectual Property Office (WIPO)
• Ease of administration

Mr Doucas said that companies, which have existing registered trademarks in New Zealand, could make an application to extend an existing trademark registration to the Madrid Protocol countries

“It doesn't eliminate need for overseas counsel if issues arise, which is why we recommend retaining the services of a trade mark professional when filing a Madrid application, one that has an available network of overseas associates just in case,” he said.

Ends/…

About Zone IP

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

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