Trade Marks
Brands and logos have proven to be valuable IP assets for businesses. A trade mark can establish and enhance the reputation of a business, and provide a sign of quality and trust. When trade marks become easily recognisable and associated with a business, they add value and build customer loyalty.
Trade marks serve are beacons for attracting business, and can take a wide variety of creative forms, commonly including distinctive words, letters, devices, slogans, symbols, pictures, and logos. Further, shapes, sounds or smells can now be considered registrable trade marks if they meet certain criteria. The options are endless.
Trade mark rights exist by use and by registration of the brand. It is possible to obtain protection of your trademark rights by using or establishing a reputation in the trade mark in relation to certain goods and services to which the mark is applied. However, establishing unregistered trade mark rights may take years, and unfortunately could be limited to the geographical region the goods or services are marketed. For example, a café will establish a reputation in the immediate area, whether city or suburb where the reputation exists, but may not cover a region.
Difficulties can arise if a trade mark owner wishes to expand or franchise a business, and essentially extend the geographical region for marketing the trade mark, only to find that they can not use the brand in another region by reason of another trader having trade marks rights to the same or similar trade mark. If that other business has also registered the trade mark, the use of the trade mark may likely result in conflict or a dispute when such expansion of the brand occurs. For these reasons and more, businesses greatly value registered trade mark rights, and we recommend a trade mark clearance search, and an application for registration of the trademark to ensure your high value brand is protected.
Registered Trade Marks
Registered trade marks provide stronger IP rights than unregistered trade mark rights, and can offer the following advantages:
Registration makes it easier to prove ownership of a trade mark.
- Registration confers a property right that can be sold or licensed.
- Rights accrue immediately on filing an application for registration, even when the mark is not initially being used or marketed. This means a trade mark can be secured before committing resources to market the product or service to which the mark is to be applied.
- Registration secures a monopoly in the trade mark that can be used to stop the same or a similar trade mark from being used for the same or similar products and services.
- Registration provides a right to sue for infringement without the need to prove that a reputation exists in the trade mark.
- The exclusive right to a trade mark can extend to an entire territory or country, even if the trade mark is only used or marketed in a small region of that country.
- Searchable applications/registrations on the trade marks register provide notice to competitors of a claim to ownership in the mark. Trade marks offer a register warning of a claim to ownership that can deter competitors, as trade marks on the register are easily searchable by businesses designing, devising and selecting new brands.
- Overseas markets can be protected for a limited time after filing on the basis of the application for registration in New Zealand or Australia.
- Enforcing registered trade mark rights is more effective and certain, and is generally less expensive, than relying on unregistered trade mark rights.
Choosing a Trade Mark
Not all trademarks or brand names are registrable. Trade marks commonly used in an industry, or which are descriptive of the products or services, are often rejected during the registration process involving the steps of filing, examination, registration.
This risk of failure can make choosing a brand name for a product or service a difficult task. However, selecting a suitable trade mark before committing resources on packaging and marketing is recommended.
Successfully avoiding conflict with competitors can be achieved by following a few guidelines.
The first step is to select a trade mark that has the potential to attract consumers and distinguish your product or services from your competitors. Avoid brands that describe a character or quality of the product, such as CHILLY for ice packs or SPARKLE for aerated waters. These types of trade marks are not considered registrable trade marks, and other businesses expect to freely use words that describe their products.
Invented words such as XERO® for accounting software, FONTERRA® for dairy products, ZESPRI® for kiwifruit make excellent brand names as they are distinctive and unique. Words having a dictionary meaning but don't refer to an aspect of the product or service can also make great brands. For example, CAT for clothing, DOVE® for soap, and TIGER for mountain bikes, ice packs or aerated waters.
Words that indirectly refer to the product can provide an effective brand such as GREENFINGERS for garden gloves or SENTRY for a building alarm system.
Devising a creative brand to distinguish your valued product or business enterprise may offer that extra X factor that boosts your business to achieve quick recognition and a competitive edge. Once a trade mark is chosen, the next step in the process is to check that no one else is using the same or similar trade mark before you adopt it. A trade mark clearance search is advisable and we can assist you with searching registers in New Zealand and overseas and paving the way for pursuing protection for your valued brands and trademarks.
When the results of trade mark searches are favourable, you could be in a position to protect your new brand with a trade mark application, and begin marketing your products and services.
Procedure for Registration
An application for registration must clearly define the monopoly rights sought in the trade mark, and focus on how the trade mark will be used in the time ahead should be considered.
Trade mark registers are divided into specific classes of goods or services. An application covers at least one class, and often multiple classes are covered. The step of selecting the best class or classes to fully protect a trade mark can be a legally complex choice, and we recommend you seek our advice for this task, as with the registration process itself.
If coverage is not adequate a trade mark might not be infringed as infringement only occurs when a competitor uses the same or similar mark on the goods or services of the registration. If all the relevant classes are not covered, infringement of registered trade mark rights may be avoided.
We would be happy to discuss the most suitable classes for your trade mark to ensure the best protection is obtained for your trade marks.
It is important not to overly limit the goods or services as it may well be that an applicant's product range is expanded over time. For example, class 25 covers clothing, footwear and headgear. If the application is restricted to T-shirts only in class 25, and the mark is later applied to baseball caps or boots, the registration may not strictly cover such goods.
Once the application is filed it will be examined by the Intellectual Property Office. The new application will be checked and a search of the register is made to determine whether any conflicting marks exist. If there are any objections to registration, an examination report will issue, and the applicant is given a period of time to respond to such objections. We are experts at managing trade mark applications for a wide range of clients locally and internationally, and have been operating for over 15 years with an established global network of Trade Mark and IP Attorneys. We can take over any problematic applications and assist you with any trade mark problems and conflicts you may encounter.
When objections are fully overcome, an application is accepted, and a statutory period of three months is allowed for anyone to oppose registration, and if there is no opposition filed, the trade mark is entered on the register. A Certificate of Registration will issue at the end of the application process. If an opposition is filed, we are fully resourced to manage opposition proceedings. Our success rate is high with oppositions, and if you encounter a conflict, we can assist you with advising on the prospects of success, and the stages of the process. Also, we are specialists at devising IP strategies to manage and settle trade mark conflicts and disputes.
A trade mark registration will be current for ten years, and can be renewed for consecutive periods of 10 years in perpetuity.
Protection Internationally
A trade mark can be registered in countries overseas. A search may be conducted before filing overseas as a trade mark may be available for registration in one country but not in another. It is not uncommon for businesses to trade in one country only and therefore each market must be considered essentially separately when choosing brands. This trend has been changing in recent years, and regional and international trade mark registrations are now possible and preferred by some businesses.
Ensuring that the mark is available for registration overseas is recommended given considerable resources will be invested in branding and marketing, and if a conflict exists in an overseas market, considerable costs may be incurred to settle a dispute, apart from the costs of rebranding. We manage trade mark clearance searches, freedom to operate reports, and can advise your business before you commit resources with launching a new brand overseas.
If a New Zealand trade mark has been filed, an overseas application can be filed within six months to claim the earlier filing date of the New Zealand application. Even when the six month period has passed, an overseas application may still be filed. However, the earlier NZ filing date can not be relied on and the actual date of filing the application is used.
An international trade mark registration regime, known as the Madrid Protocol, is now available to New Zealand businesses, and one registration can cover over 80 countries. For businesses wanting to protect a trade mark in more than about 15 countries at the same time may face cost savings by considering this option. However, if you are only interested in protecting your brand in a handful of countries, and with a limited budget, developing an IP strategy to pursue protection in only those countries of interest may be more cost effective and suitable in the circumstances. Some disadvantages include the high cost, and an all eggs in one basket risk if a basic or main registration is attacked in one country, it can affect the whole registration. Furthermore, any assignments of rights may be difficult to register, especially if the purchaser is a business in a non-member country of the Madrid Protocol system.
We are also IP experts at managing trade mark conflicts in New Zealand and Australia for overseas applicants, and can be contacted to assist parties with IP strategies for overcoming notifications of provisional refusal and trade mark objections, and other proceedings with international registrations designating New Zealand.
We can be contacted to explain the process in more detail to you directly, and provide an IP audit or IP strategy to resolve any problems with your international trademark registrations.