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Choosing a trade mark for your business is an important decision, as it will impact your brand’s growth and the nature of your presence in the market. You want to make sure that your trade mark will be relevant to your business for its entire lifespan so that customers can easily recognise your products or services. You also have to consider whether you want to register your trade mark. There are clear legal benefits to doing so, but you must fulfil certain requirements before the Intellectual Property Office of New Zealand (IPONZ) will approve your registration. This article will set out the benefits of registration for you to consider, as well as some tips for choosing your trade mark.

Why Register Your Trade Mark?

Under New Zealand law, you still have legal rights to your trade mark even if you do not register it. However, it is much harder to prove these rights if someone else tries to copy your trade mark. If you register your trade mark, it will go on a public register, and you will have clear and exclusive ownership in this intellectual property. This means that only your business can use this trade mark, and you can stop other people from selling products or services using an identical or similar one. 

Having a trade mark exclusive to you makes it easier for customers to differentiate your business from competitors and make your products or services more memorable. This adds value to your trade mark.

If you plan to sell your business, having a registered and recognisable trade mark can be a desirable intellectual property asset for buyers. If you decide to assign or license your trade mark to another party for further brand promotion, you can ensure that your ownership is not called into question.

Will My Trade Mark Be Approved?

To register your trade mark, you first have to apply to IPONZ. They will be responsible for approving it (i.e. accepting it for registration). However, that approval is subject to some conditions you need to meet. These conditions include:

  • the distinctiveness and originality of your trade mark; and
  • whether it will be confused with already existing trade marks.

It is better to think about how you will meet these criteria before applying, rather than waiting for a trade mark objection during the examination of your application to register the trade mark. You can check your competition to see what kinds of trade marks they are already using and use that as a base to avoid. You also have to be sure of what classes of goods or services your trade mark will apply to, as that will also affect whether IPONZ will approve your registration.

If your trade mark is sufficiently unique and distinctive, this increases your chances of approval.

Some tips for choosing a distinctive trade mark include:

1. Think About Your Brand Vision

If you are struggling to think of trade mark ideas, a useful exercise can be to think of what you want to associate your brand with. You can use this as a good starting point for words or phrases that show those concepts.

For example, Nike wants to associate its products with excellence in sports. The name “Nike” comes from the Greek goddess of victory, which is a unique link to make.

2. Invent a Word

Inventing a word for your trade mark is a good option, as you can be reasonably assured that it is not too generic or similar to a trade mark that another business is already using. You could look to languages outside of your own geographic location for help.

For example, “Verizon” is made up of the Latin word “veritas” (meaning truth) and “horizon.”

3. Come Up with a Unique Slogan

The right slogan can be memorable and relay your business values and ideas to your customers simultaneously. It is also easier to distinguish your goods and services from your competitors with a slogan.

4. Avoid Generic or Descriptive Words

When considering your registration application, IPONZ will not approve your trade mark if it is too generic or simply describes what product or service you offer.

5. Use Your Uncommon Last Name

Generally, it is not a good idea to use your last name for your trade mark, as it can be easily confused with other businesses. 

For example, applying to register “Smith’s Repairs” as a trade mark may not be successful, because that is too generic. 

If your business provides client services and relies a lot on word-of-mouth reputation, if you have a unique last name, that can be a distinctive option for your trade mark. You could also use a middle name, or another name unique to you if appropriate.

6. Use an Unusual Trade Mark

Most businesses will register their business or product name for a trade mark. But, you can register other things as well, such as:

  • shapes;
  • colours;
  • smells; or
  • tastes.

Associating an unusual trade mark with your brand could be a good option. 

For example, Tiffany & Co. has trademarked its signature shade of blue, called “Tiffany Blue”.

Key Takeaways

Choosing a trade mark is a key decision for your business because it will shape your brand growth and marketing. Registering your trade mark is a good idea because of the registration’s legal protections. However, your trade mark needs to be sufficiently distinctive to be approved. If you would like more information or help choosing your trade mark, contact LegalVision’s New Zealand IP lawyers and attorneys or fill out the form on this page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a sign or symbol that you use to identify and distinguish your business from others in the market. This could be your business name, a product, or a logo, among other things.

How do I choose a good trade mark?

A good trade mark is distinctive and distinguishable from others in the market. Therefore, customers will not confuse your trade mark with another business’. An invented word is a good example of a trade mark.

How do I register a trade mark?

You register your trade mark by applying to the Intellectual Property Office of New Zealand (IPONZ). Using certain criteria, they decide whether they should approve your trade mark.

Why should I register a trade mark?

If you register your trade mark, it means that you have exclusive rights to use this intellectual property. Therefore, you can stop other people from using similar or identical marks, and can carve out your spot in the market.

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