Exporters to Australia Beware: Mind your Rs and TMs

Wednesday 13th March 2013
Article written by: Chris Ross

New Zealand and Australian trade mark law is so similar you would be forgiven for thinking they are, for exporting purposes, the same.  However, the respective jurisdictions are surprisingly different in terms of the labelling and use of the ® symbol on goods and services. 

When a trade mark is registered in New Zealand, the proprietor is free to use the ® symbol on its goods or in association to its services. The ® demonstrates to the public and traders alike 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 of the 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 AUD170[6], leaving a business owner approximately NZD12,648[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 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 confectionary.

Registering your trade mark in New Zealand and Australia will not only eliminate potential relabeling 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.

[1] Trade Marks Act 2002 (NZ) s.186(1)(a)
[2] Trade Marks Act 2002 (NZ) s.186(4)
[3] New Zealand Treasury (2012, June 8).New Zealand Economic and Financial Overview 2012, p.32. Retrieved 11 March 2013 from http://www.treasury.govt.nz/economy/overview/2012/nzefo-12.pdf 
[4] Trade Marks Act 1995 (Aust.) .s.151(1)
[5] Trade Marks Act 1995 (Aust.) s.151(5)(d)
[6] Crimes Act 1914 (Aust.) s.4AA
[7] Exchange rate calculated 12/03/2013.

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