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A trade mark is a kind of intellectual property right. You can use trade marks to protect critical branding assets for your business and provide a recognisable identifier for your customers. As a result, common trade marks can include things like a business name or logo. While trade marks can be advantageous for your business, they can get quite complex. Therefore, you should seek legal advice for developing the best trade mark strategy for your business. For some guidance, this article will go through four questions to ask your New Zealand trade mark lawyer.

Do I Need to Register a Trade Mark in New Zealand?

As an intellectual property asset, trade marks can bring great value to your business. Trade marks protect key identifying aspects of your business, which are vital for your branding and marketing strategies. While registering a trade mark may be a relatively straightforward process, you need to consider whether your business is at a point where it can commit to a trade mark. In particular, registering a trade mark requires certainty around:

  • who will own it;
  • the goods and services it will cover; and
  • the exact elements it consists of.

Maintaining a trade mark is an ongoing commitment that you will need to pay regular fees for. Therefore, a lawyer can help you determine whether your business needs to register key trade marks now or further down the line.

Trade marks cost $100 per class to register (excluding GST). They then cost $200 per class (excluding GST) every ten years to renew. 

While it is not compulsory to register a trade mark in NZ, it provides several benefits. You will be able to defend your trade mark rights more effectively with a registered trade mark, whereas this may be difficult with unregistered trade mark rights.

Will My Trade Mark Application Be Successful?

When you apply to register your trade mark, the Intellectual Property Office of New Zealand (IPONZ) assesses it based on their specific criteria. As a result, you need to prepare your application appropriately, to meet those criteria. A trade mark lawyer can help you with your application to ensure that it meets IPONZ’s requirements. In addition, they can analyse what you have prepared and provide valuable insight for increasing your chances of approval.

In particular, they can guide you on:

  • the distinctiveness of your trade mark;
  • your trade mark’s capability of distinguishing your goods or services from other traders;
  • including the correct information in your trade mark application; and
  • the exact fees you need to pay.

With tailored advice specific to your needs, you can prepare a robust application that best reflects your business’ interests.

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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What Goods or Services Should My Trade Mark Cover?

As a part of your application, you need to detail what goods or services you want your trade mark to apply to. You need to do this for various reasons, but in particular, this determines your trade mark’s scope of protection.

For example, if someone uses a trade mark similar to yours, it will only be infringing on your rights if they use it for the same or similar goods and services.

Your trade mark’s specification describes the goods or services that you register your trade mark for. Notably, IPONZ categorises goods and services into specific classes for better organisation and identification. Therefore, you need to specify these classes as a part of your application.

For instance, if you sold skincare products, you would detail the specifics of those products and their corresponding class. Here, one of the relevant classes would be Class 3 for cosmetics and cleaning preparations.

Preparing your specification can be quite a technical process, especially if you are still developing your trade mark. A trade mark lawyer can help you determine the exact scope of the goods or services for your trade mark to ensure you have the best protection for your business.

How Can I Do a Trade Mark Search?

You cannot register a trade mark that is identical or confusingly similar to one already on the register. Therefore, as a part of your preparation for your application, you should conduct a trade mark search. This process includes various searches to see what trade marks are similar to yours and what your competitors are using.

Your trade mark search will include:

  • using IPONZ’s trade mark register search;
  • using online search tools like ONECheck; and
  • conducting an online search for keywords related to your trade mark.

You can conduct a trade mark search on your own, and you can take advantage of IPONZ’s search and preliminary advice service. However, a trade mark lawyer can also use resources available to them to help your search. Searching for trade marks can be a complex process, so it is best to have a lawyer assist.

Key Takeaways

Registering a trade mark for your business’ key branding assets is a wise choice. However, when preparing your application, you need to do so appropriately. A trade mark lawyer can help you with this process, and help you set up a trade mark strategy that best serves your  interests.

If you need help with 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.

Frequently Asked Questions

What is a trade mark?

A trade mark is a type of intellectual property right. It can protect signs representing your business, such as your name or logo.

How can I register a trade mark?

The Intellectual Property Office of New Zealand manages all trade mark registrations in the country. You can prepare an appropriate application and send it to them for approval.

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