AJPark

The thought of expanding a successful New Zealand business internationally is exhilarating.  There are many reasons to consider exporting.  Perhaps your product or service is highly sought after overseas.  Exporting will give you access to a much wider market. And exporting may promote business growth, provide a larger economic base or increase your profitability. 

There are some important steps to take to ensure your foray into exporting is successful.  These include researching your market; setting up an export strategy; forming an export plan; choosing your sales presence; promoting your product; ensuring you have cash flow; choosing your distribution method; considering transport choices; and setting up an after sales policy.  And that’s without even thinking about the legal issues yet!

If your business intends to launch its products into overseas markets, there are legal issues about branding, labelling and packaging which should not be overlooked.

Prepare by protecting valuable trade marks well before any launch into a new market.

Whether you propose to export your product with a trade mark which is well established in New Zealand or whether you propose to launch under a newly developed trade mark, there a number of issues you need to consider.

Trade mark selection
Trade mark selection is important.  Many New Zealand businesses want to adopt a trade mark suitable for export that immediately suggests the product originates from New Zealand.

But similar rules apply overseas as they do in New Zealand for registering a trade mark.  The trade mark applied for must be distinctive.  If your trade mark is descriptive of a characteristic, quality or function of your product or services, then chances are it will be unregistrable in New Zealand and also overseas. And it doesn’t matter what language the trade mark is translated into. 

Registering geographical place names can also be problematic.  Maori words can be effective trade marks provided when translated into English they do not describe your product or service.  The role of a trade mark is to distinguish the products or services of one trader from those of another trader.  Keep this top of mind when adopting an export trade mark. 

Do your homework
Search the relevant trade mark registers to see if your proposed trade mark will infringe any existing registered marks in the countries you intend to export to.  It can take several weeks to complete searches in some countries so start searching early.

Research your proposed export market in the countries of interest to see if there is any similar unregistered trade marks in use as well.

Protect yourself
If you find that your chosen trade mark is available for use and is suitable to use in the countries you propose to export to, you’ll need to obtain formal trade mark registration in each of those countries.  Registration of your trade mark is important in countries, like Japan, which do not recognise trade mark rights gained from use. 

Getting a trade mark registration can take time so start the process as soon as possible

Be cautious if you translate your trade mark and slogans into a local language.  Decide whether you will use your brand in English or translate it into the local language.  If you decide to translate, will you go for a literal translation or a translation that mirrors the essence or message of your brand?  Don’t underestimate the complexity that can arise with translations.  

Many businesses have suffered product launch failures because of mistranslations.  The language of business may be one which everyone understands, but many businesses have made massive branding mistakes when trying to mirror the success of their campaigns in markets where their native tongue isn’t spoken.

Some classic translation blunders include:

• In Taiwan, Pepsi’s advertising slogan ‘Come alive with the Pepsi generation’ was translated as ‘Pepsi will bring your ancestors back from the dead’.
• In Italy, ‘Schweppes Tonic Water’ was translated as ‘Schweppes Toilet Water’.
• In Mexico, Parker Pens caused alarm when its slogan ‘It won’t leak in your pocket and embarrass you’ was translated into ‘It won’t leak in your pocket and impregnate you’.
• In Spain, Coors slogan ‘Turn 1 loose’ was translated as ‘You will suffer diarrhoea’.
• In Spain, Frank Perdue’s chicken campaign created confusion when its slogan ‘It takes a strong man to make a tender chicken’ became ‘It takes an aroused man to make a chicken affectionate’.

Translation problems can be avoided by taking care.  Work with a local translator, seek feedback and comment from your customers, and arrange for your translation to be translated back into English to check for differences.

It is also prudent to check that your proposed trade mark does not have any adverse, slang or offensive meaning in the country of interest, especially if you are planning to export into a non English speaking country. 

Think beyond words and slogans
Consider also your use of colours and images.  Just because they are acceptable in New Zealand does not mean they will not offend overseas.  Colours like red, gold and black can have strong connotations in some cultures. Religious imagery can cause a great deal of offence in some countries. And images of cows, which are acceptable in New Zealand, are offensive as trade marks in certain countries which consider these animals as sacred.

Think about domain names
If you intend to use a local domain name to support your product or service, then you will need to take steps to gain a registration in each country of interest. 

It is not as easy to gain domain names in some countries as it is in New Zealand.  Some countries require that you have a locally incorporated company before you can register a domain name.   You need to check the individual requirements of each country. 

And don’t forget about packaging and labelling
Review product packaging keeping in mind local rules of the country of interest and packaging similar products already in that market.  Look at packaging used by major competitors in your product category as well.  And make sure that your packaging is different.

Most countries have specific product labeling rules and certain information must be included on labels.  It is important to know what these rules are.

All these issues need to be considered before you export.  As more than one New Zealand business has found, it is far easier to correct packaging or adopt a new trade mark early in export planning rather than after money has been spent on overseas promotion or launch.  Emergency labelling of container loads of product three days before shipment is an inconvenience that most New Zealand businesses would prefer to avoid!

An edited version of this article was published in NZ Retail August 2007

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  Corinne Blumsky

  Partner