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Your business will own various assets central to its functioning and success. Some of those assets are intangible when you operate in app development or other technology. Still, they bring you value in the same way that physical property can. One such type of asset is intellectual property, which refers to creations of the mind, including those in your app. There are different kinds of intellectual property rights, which each protect different things. Trade marks can protect your app’s unique name, so it is worthwhile to consider registering one. Therefore, this article will provide some background and explain whether you should register a trade mark for your app’s name.

What Is a Trade Mark?

A trade mark is one kind of intellectual property right that applies to certain signs or marks. In particular, it serves as a badge of origin that represents your app and what you provide. People use trade marks to identify you and distinguish your brand from your competition. Trade mark protection can include protecting:

  • words;
  • phrases;
  • numbers’
  • symbols;
  • labels;
  • logos;
  • colours; or 
  • any combination of these.

As a result, your app’s name can easily qualify as a trade mark, as long as it meets any other requirements that apply. You can register for formal trade mark rights with the Intellectual Property Office of New Zealand (IPONZ).

Registered vs Unregistered Trade Marks

It is not mandatory for you to register your app name as a trade mark. Unregistered trade mark rights can exist, and you do have some legal remedies available if someone else breaches them. However, these rights can be difficult to enforce. If someone uses and commercialises your app’s name without permission before you can engage in any legal action against them, you need to prove that:

  • your app’s name exists as a recognisable trade mark that represents your app/business; and
  • you own said trade mark.

This process involves preparing evidence surrounding your trade mark, and proving specific points around both its existence, reputation and function. 

It is much easier to gain a positive result if you have registered trade mark rights rather than relying on an unregistered trade mark. Additionally, it is often significantly less expensive.

Benefits of Registering a Trade Mark

Registering your app’s name gives you greater certainty around its protection against copycats. In particular, the benefits of registering your app’s name as a trade mark include:

  • the exclusive right to use and commercialise your app’s name;
  • an official record of your ownership over your app’s name, which discourages others from copying it or registering similar trade marks;
  • clear ownership rights that are easier to prove than those of an unregistered trade mark;
  • use of the ® next to your app’s name to indicate your registered trade mark ownership;
  • legal options available if someone tries to replicate or imitate your app’s name; 
  • a confirmation of your app’s distinctiveness in the market;
  • increasing asset value over time as your app becomes more established; and
  • the ability to sell your app’s name trade mark as part of selling your app or business altogether.

Consequently, there are many benefits to registering a trade mark for your app’s name. Overall, you have greater legal protection if someone attempts to copy your app and use its name without permission. Infringers can confuse users and detract from your app, so it is worthwhile to implement measures to stop them.

Trade Mark Essentials in New Zealand

Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.

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Conditions for Registration

However, before you can take advantage of the benefits of registering a trade mark, you need to ensure your app’s name meets IPONZ’s registration criteria. Notably, if you wish to register your app’s name as a trade mark, it cannot:

  • be too generic;
  • simply describe the good or service your app provides;
  • use common industry words or words that you would use to describe or promote your app;
  • use solely praising words (for example, it is highly unlikely that you could register ‘fun to play’ for your gaming app);
  • be identical to another trade mark application or registration that already exists; 
  • be capable of being easily confused with another trade mark application or registration that already exists; or
  • contravene other criteria that IPONZ outlines.

Before applying to register, you need to conduct a thorough trade mark search to make sure something similar to your app name does not already exist. An experienced intellectual property lawyer can help you assess the distinctiveness of your app’s name to determine whether you would be successful in your application to IPONZ.

Once you have prepared the necessary documentation and determined that your trade mark meets the necessary requirements, you can submit your trade mark application through IPONZ’s online portal.

Trade mark registration typically costs $100 per class of goods or services you want to provide under the trade mark.

Key Takeaways

Your app’s name is a key identifier that draws customers and makes you memorable. Therefore, you want to ensure you have appropriate legal protection for this asset. One way of assuring this is to register your app’s name as a trade mark. 

If you need help with trade marks, our experienced intellectual property 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.

Frequently Asked Questions

What is a trade mark?

A trade mark is a type of intellectual property protection that serves as a unique identifier for your business. Common examples include your business name or logo.

Should I register a trade mark?

Registering a trade mark grants you specific legal protections against those trying to copy important aspects of your brand. Therefore, registering a trade mark for things like your business name or logo would be wise.

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