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Trade marks can form an integral part of your business’ branding and image. However, there are many different kinds of trade marks available for you to protect your brand. Therefore, you should ensure that you are using your trade mark correctly and for the right purposes. 

For some guidance, this article will explore the different kinds of trade marks your business can use in New Zealand.

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What is a Trade Mark?

A trade mark is just one kind of intellectual property protection. You can own a trade mark like you would other business property, and profit from it in similar ways. How you do so can vary. This depends on both the nature of your trade mark and your business plan.

A trade mark’s purpose is to link your business to the goods or services you provide. It serves as a “badge of origin”, indicating to your customers that your business is the source of the goods or services that the trade mark protects.

For instance, you can register a catchy slogan or jingle as a trade mark. When your customers hear that jingle or see that slogan, they will know that the goods or services they refer to come from your business.

Trade marks can be registered or unregistered. As the owner, you have particular legal rights in both cases, but you have stronger legal protection if you are the registered owner of your trade mark. You can register your trade mark with the Intellectual Property Office of New Zealand (IPONZ). IPONZ is the national organisation that deals with trade mark and intellectual property matters.

Are There Different Kinds of Trade Marks?

There are various ways to categorise different trade marks, and how you do so depends on the function of those categories and your goals. One way to differentiate between them is the nature of the trade mark itself. Notably, trade marks can consist of:

  • words;
  • shapes;
  • symbols;
  • sounds;
  • colours;
  • images;
  • logos; or
  • a combination of these.

Therefore, one way to categorise trade marks depends on these elements. The most common types of trade marks in New Zealand are:

  • word trade marks;
  • image trade marks; or
  • combined word and image trade marks.

For example, your business logo with your business name incorporated into it would classify as a combined trade mark.

When you apply to register your trade mark with IPONZ, you will need to specify the different elements of your trade mark in this way.

Trade Marks and Their Specifications

Another category for trade marks aligns with the goods or services that they protect. Notably, your trade mark’s legal protection only applies to the goods or services you specify in your application. As a result, if another party has a similar mark to yours, but it protects entirely different goods or services, they may not conflict with each other.

In New Zealand, IPONZ uses the Nice classification system to categorise the possible goods or services your trade mark could apply to. This system is an international standard that classifies goods and services into 45 total classes, with classes 1-34 relating to goods, and classes 35-45 relating to services. 

Think carefully about the goods or services you want your trade mark to protect, ensuring they are in areas that you trade in. For example, if you sell cleaning products, you would want to register your trade mark to protect those kinds of goods.

The more classes you register your trade mark for, the higher your registration fee. As a starting point, trade mark registration can cost $100 per class (excluding GST).

Other Kinds of Trade Marks

Additionally, there are some kinds of trade marks that people will register for a specific purpose. In particular, these can include certification marks and collective marks. Both function similarly to a standard trade mark, but there are some extra requirements for usage and registration.

Collective marks protect the goods or services that the party registering specifies. However, in these cases, the party that registers this kind of trade mark must be a collective association. As a result, members of that association can use that collective mark for their goods and services, meaning that they can:

  • take advantage of the legal rights that come with a collective mark; and
  • indicate their goods or services come from a member of that particular group.

On the other hand, someone can only use a certification mark if the good or service they wish to use it for meets the certification mark’s standard. A certification mark indicates that the good or service it protects has a particular characteristic. It is up to the party registering the certification mark to ensure anyone who uses it meets that standard.

Key Takeaways

Trade mark law is a broad and varied field, meaning there are different ways that you can categorise trade marks. Therefore, you must be clear about both the elements of your trade mark and what you want it to protect. 

If you need help with your trade mark, 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 an intellectual property right to protect signs that distinguish your business from others. These usually form a part of your brand, such as your business name or logo.

Are there different kinds of trade marks?

There are different ways to categorise trade marks, depending on why you need to do so. One way to separate them is based on the different elements that make up the trade mark, such as a word trade mark versus a logo trade mark.

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