Exporting to Australia? Watch your ®s and ™s

Understanding the nuances of New Zealand and Australian trade mark law can be a powerful tool for exporters.

While the laws may seem similar at first glance, they hold key differences that can significantly impact your business. For instance, the use of the ® symbol on goods and services is subject to unique regulations in each jurisdiction.  When a trade mark is registered in New Zealand, the proprietor can use the ® symbol on its goods or in association with its services. The ® demonstrates to the public and traders that a trade mark is protected. It is an offence in New Zealand to claim that a trade mark is registered when it is not[1].

New Zealand law also provides that exporters to New Zealand, who may not have a New Zealand trade mark registration, are free to use the ® symbol in connection with their goods and services if the trade mark is registered in an overseas jurisdiction[2]. This provision recognises the modern-day global market for goods and services.

Unfortunately, this pragmatic approach is not reciprocated by our most significant and principal trading partner.[3] Under Australian law, the privilege of using the ® symbol is restricted to trade marks registered in Australia[4] unless:

“the word or symbol is used, together with other words or symbols of the same or a bigger size, to indicate that the trade mark is registered in that other country or in a country outside Australia[5].

The fines for non-compliance are not trivial.  A breach of any subsections in section 151 of the Australian Trade Marks Act carries a penalty of 60 ‘penalty units’. Under Australian federal law, one penalty unit currently holds the value of AUD330[6], leaving a business owner approximately NZD19,800[7] out of pocket if found liable under the Act.

To avoid these penalties, New Zealand traders exporting to Australia must ensure that their packaging or advertising complies with Australian law on the correct identification of trade marks.  However, re-labelling may not only be an inconvenience, but using “® in New Zealand” may prove aesthetically undesirable, especially on small goods such as cosmetics or confectionery.

Registering your trade mark in New Zealand and Australia will not only eliminate potential re-labelling headaches and pecuniary penalties, but will grant your trade mark full protection against infringing third parties in Australia. If you are interested in pursuing an Australian registration for your local trade mark, please contact us for more information.