Protecting your business’ brand requires a comprehensive understanding of trade mark protection. Unfortunately, protecting your trade marks is not as simple as registering them. Instead, various steps must occur before and after registration to protect your brand adequately. This article will take you through the five key stages of trade mark protection.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
1. Preparing Your Trade Marks
Before commencing the trade mark registration process, preparation is essential. This stage involves several critical steps, which are outlined below.
Trade Mark Selection
Selecting the right trade mark is the first major step to consider. Your mark should:
- be distinctive;
- not merely descriptive of your goods or services; and
- not infringe on existing marks.
Further, conducting a comprehensive trade mark search to identify potential conflicts is also a crucial part of this process.
Trade Mark Creation and Design
If you do not already have branding materials, you will need to create them. This will be the case if you are starting a new business. At a minimum, developing a brand involves choosing a distinctive name or logo that effectively represents your goods or services. The design should align with your business’s product or service offering and its values and appeal to your target audience.
Determining the Classes of Goods and Services
In New Zealand, trade marks are categorised into classes of goods and services. It is essential to determine the relevant classes for your products or services. Accurate classification ensures you receive protection for your goods or services.
2. Registering Your Trade Marks
Once you have prepared your trade marks, the next stage requires registering them with the Intellectual Property Office of New Zealand (IPONZ). Trade mark registration provides legal protection and exclusive rights to use your mark in its specified classes of goods and services.
To initiate the registration process, you must file a trade mark application with the IPONZ. This application should include detailed information about your trade mark and the goods or services it represents.
The IPONZ will then examine your application to ensure it complies with the requirements and does not conflict with existing trade marks. If your application is accepted, it will proceed to publication.
After publication, there is a period during which third parties can oppose your trade mark registration if they believe it infringes on their rights. Resolving such issues is a crucial part of the process. If there are no oppositions or you successfully resolve them, you will have a registered trade mark.
Continue reading this article below the form3. Monitoring and Enforcement
Registering your trade mark is not the end of the journey. Instead, it is only the beginning of the trade mark protection phase. Importantly, you must regularly monitor the marketplace for unauthorised use of your trade mark. To do so, you will need to conduct online searches. You may need to utilise software for monitoring services or cooperate with IP professionals.
If you identify any infringements, taking legal action will be necessary, including:
- sending cease-and-desist letters;
- negotiating settlements; and
- or pursuing litigation in New Zealand’s courts.
4. International Considerations
In an increasingly globalised world, it is essential to consider trade mark protection beyond New Zealand’s borders. For example, if you plan to expand your business into other countries, use international trade mark registration systems such as the Madrid Protocol. The Madrid Protocol allows you to seek protection in multiple countries through a single application.
Protecting your trade marks abroad requires vigilance. You may need to enforce your rights in foreign jurisdictions, which can involve legal proceedings in those countries. Likewise, you should carefully consider this extra monitoring and enforcement before pursuing international trade mark registration.
5. Ongoing Maintenance
Trade mark protection is an ongoing process that requires regular attention and maintenance. For example, you must renew your trade marks every ten years. Failure to renew can result in the loss of protection.
Further, as your business evolves, your trade mark protection strategy may need to adapt. As such, you must routinely ensure that your registered trade marks align with your current products, services and branding. You should also maintain thorough records of your trade mark registrations, renewals and any other deadlines.
Key Takeaways
Protecting your brand is not as simple as registering your trade marks. Instead, various steps must occur before and after registration to protect your brand adequately. The five key steps to trade mark protection are:
- preparation;
- registration;
- monitoring and enforcement;
- considering International expansion; and
- ongoing maintenance.
If you need assistance protecting your trade marks, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.
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