Intellectual property (IP) is a critical asset of every business. In a business context, your IP includes all elements of your brand. As such, your IP is a large part of what determines your business’ value, so you should not underestimate the importance of protecting it. One essential type of IP you should protect is your trade marks. This article will take you through some essential trade mark checks you should make for your business’ IP.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
Internal Review
Your business will have various types of IP that need to be assessed. This means an internal review is one of the first checks you should carry out on your IP. An internal IP review will involve considering every trade mark your business has and determining which you should formally register.
Registering and maintaining your trade marks can be a time-consuming process. This makes it essential that you refrain from registering trade marks unnecessarily. One way you can internally review which trade marks are worth registering is to monitor your IP use over some time. This will allow you to see which marks you often use in your marketing and advertising. This will help you prioritise the most important marks to register.
Domain Name
Another important IP check to consider is your domain name. A domain name is an internet address that lets internets user visit a specific website. It is a common branding strategy for a domain name to be identical or similar to a business name or trade mark.
The Domain Name Commission NZ is responsible for New Zealand’s domain name space. You can use their website to assess if your domain name is registered. You should check that a proper domain name is available before registering a trade mark for your business name. If there is a dispute regarding the rights to an NZ domain name, the Domain Name Commission NZ provides an online dispute resolution tool. This free online negotiation or mediation process helps resolve disputes relating to domain names. If your domain name is critical to your branding strategy, you may wish to consider lodging such a dispute.
Continue reading this article below the formNew Zealand Trade Mark Searches
Performing a comprehensive New Zealand trade mark search is another crucial IP check you should carry out. A thorough trade mark search will help you check if somebody else has applied for or registered a trade mark identical or similar to yours.
Where a trade mark identical or similar to yours already exists, it may be difficult to register your mark. As such, such a search will reduce the chances that the Intellectual Property Office of New Zealand (IPONZ) will reject your application.
International Trade Mark Searches
You should conduct an international trade mark search and complete a New Zealand trade mark search. Checking that your mark is available overseas will help avoid future trade mark disputes if you decide to expand overseas.
The international trade mark registration system is quite well-developed. For example, the World Intellectual Property Organisation’s Global Brands Database provides a one-stop search tool for all countries part of the Madrid System.
You may have yet to consider expanding your business overseas, particularly if you are still in the early stages of your business. However, keeping an open mind and thinking ahead is always important in business.
Key Takeaways
Your IP is a large part of what determines your business’ value. This makes it essential that you protect it. One way to protect your IP is to conduct necessary trade mark checks, including:
- an internal trade mark review;
- a domain name check;
- New Zealand trade mark search; and
- international trade mark search.
If you need assistance conducting trade mark checks for your business, our experienced intellectual property lawyers can help 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
Having a registered trade mark does not automatically give you rights to a domain name. As such, you should check a domain name’s availability before registering a trade mark.
There are several IP checks you should carry out. Firstly, you should internally assess your business’ IP. You should also consider the availability of a domain name for your business and conduct thorough New Zealand and international trade mark searches to check whether an existing trade mark is identical or similar to yours.
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