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If you are starting a new business, you may have thought about applying for a trade mark to protect your brand. There is no formal requirement for when you need to register a trade mark. However, it is important to keep in mind that it takes a minimum of six months for a trade mark to be registered in New Zealand. This article will consider some primary factors to help you determine when is the right time to undertake trade mark registration for your new business.

What Can Be Registered as a Trade Mark?

A trade mark is a sign or symbol which is used to differentiate your business from other traders. Most businesses choose to register the following signs as a trade mark:

  • business name;
  • product or service name; and
  • logo.

For example, some of the trade marks that Nike owns include the:

  • word ‘Nike’;
  • swoosh logo;
  • words ‘Air Jordan’;
  • ‘Jumpman’ logo; and
  • ‘Just Do It’ slogan.

A registered trade mark allows you to exclusively use the trade mark and license it. You also have the authority to stop others from using an identical or confusingly similar trade mark.

Other advantages of owning a registered trade mark include:

  • providing brand protection throughout New Zealand;
  • deterring competitors from misusing your brand;
  • establishing an asset that can be licensed or sold; and
  • increasing the chances of successfully enforcing your legal rights to the trade mark.

Who Will the Owner of the Trade Mark Be?

You should have set up your business framework and obtained a New Zealand business number (NZBN) before applying for a trade mark. If the trade mark will be used by a company that is about to be formed, you can assign the trade mark to the new entity once it has been formed.

For example, you apply for a trade mark under your personal name, Emily Brown, and subsequently register a company, Emily Brown Limited. Here, you will need a written agreement to effectively transfer the trade mark and update the owner with the Intellectual Property Office of New Zealand (IPONZ).

Have You Chosen a Business Name or Logo?

Most businesses apply to register their business name and logo as trade marks. You should ensure that you have selected a brand name and designed a logo you are pleased with before starting the trade mark process. This is especially important because once it is filed, you will not be able to change your trade mark. You will need to file a fresh application instead.

When choosing a business name or logo, you should ensure that it:

  • distinguishes your goods and services from those of other traders; and
  • is not identical or similar to an existing trade mark concerning the same goods or services.

For example, if you own a watch repair shop and want to register a trade mark for your business name ‘Expert Watch Repairs’, this will likely be seen as descriptive of your services and be difficult to register. Similarly, if you want to register a logo that contains an image of a generic watch, this may be difficult to register as other businesses may need to use the same image.9

We also recommend searching the database of filed and registered trade marks in New Zealand by using IPONZ’s Trade Mark Check to see whether there are any existing trade marks that are identical or similar to yours.

What Goods and Services Are You Going to Provide?

You should have a clear idea of what products you will be offering or what services you will be delivering. This is because, when applying to register a trade mark, you need to select the goods or services that your trade mark is or will be used with. This list of goods and services is divided into 45 ‘classes’ that you can search for on the IPONZ’s Classification Database.

For example, if you are starting a clothing brand, you should consider:

  • what clothing items you are selling. For example, t-shirts, pants, sweaters, sports shoes, and hats fall in class 25;
  • whether you will sell clothing accessories. For example, jewellery and watches fall in class 14, whereas sunglasses fall in class 9; and
  • whether you will sell your own clothing or clothing of other brands. For example, retail services fall in class 35.

It can, however, be hard to foresee how the product or service line of your business will change in the future. If you want to expand your list of goods and services afterwards, you can only do this by filing a new application.

For example, you own a floristry and registered your trade mark “Pip and Petal” in class 31 for fresh flowers. A few months later, you decide to launch flower delivery services. Accordingly, you would file a new application for the same trade mark in class 39 for flower delivery.

How Are You Going to Market and Sell Your Goods and Services?

You should consider how you intend to use your trade mark to advertise and promote your business. For example, you may decide to display your trade mark on your:

  • website;
  • social media pages;
  • product packaging;
  • invoices; or
  • shopfront signage.

It is important to use your trade mark consistently because you could risk losing your trade mark rights otherwise.

What Are Your Plans for Growing the Business?

While it is important to focus on immediate needs, you should also consider your long-term goals for the business. Starting the trade mark process before or at the time of the launch will be beneficial if you plan on, for example:

  • selling your products in major retail stores;
  • opening several stores across New Zealand; or
  • raising capital with professional investors.

Do You Have Concerns About Others Using Your Trade Mark?

You may want to register a trade mark early on if you are concerned about how your mark is being used.

For example, you have discovered that a competitor has started using a similar trade mark after you. Therefore, owning a registered trade mark will give you a stronger leg to stand on if you decide to take action against the competitor.

If a competitor applies for the mark first, they will receive a priority date. This means that they will receive preference over any subsequent applications. Therefore, you may have to legally defend your brand and spend money opposing their trade mark application.

Key Takeaways

When you decide to register a trade mark will largely depend on your business and brand protection strategy. A prudent approach would be to apply to register your trade mark before or at the time you start using it. However, to help you make this decision, consider whether you:

  • have registered the entity that will own the trade mark;
  • have chosen a business name and logo;
  • know which products and services you will be providing;
  • know how you will market and sell your products or services;
  • have plans to expand your business; or
  • are concerned about competitors using your mark.

If you have any questions about registering a trade mark, contact LegalVision’s intellectual property lawyers on 0800 005 570 or fill out the form on this page.

What is a trade mark?

A trade mark is a sign or symbol which is used to differentiate your business from other traders. Most businesses choose to register their business name, product name (sub-brand) and logo as trade marks.

Who will own the trade mark?

You should have set up your business framework and obtained a New Zealand business number (NZBN) before applying for a trade mark. If the trade mark will be used by a company that is about to be formed, you can assign the trade mark to that new entity.

How can I protect my trade mark?

If you are concerned about another business using your trade mark, you should make sure to register it as soon as possible.

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