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Being a registered trade mark owner means that you have the exclusive right to use the trade mark and prevent others from using the same or confusingly similar trade mark. However, to ensure that it remains protected, you have the duty to maintain your trade mark. This article will set out five tips that will help you maintain your trade mark.

1. Use the ® Symbol

You may have seen signs or logos that have a “™” symbol next to them, whereas some have a “®” symbol. The distinction between the two is that the:

  1. ™ symbol indicates that you have a pending or unregistered trade mark; and
  2. ® symbol indicates that your trade mark has been officially registered with the Intellectual Property Office of New Zealand (IPONZ).

Displaying the ® symbol next to your registered trade mark means that you are entitled to use, license, and sell your trade mark exclusively. This will, in turn, help prevent others from violating such rights.

2. Keep Your Contact Information Up to Date

Keeping your contact details up to date, especially your address, is important so that IPONZ can notify you of any crucial information about your trade mark.

For example, when it is time to renew your trade mark (after ten years of registration), IPONZ will send you a notification with renewal details.

If you do not update your address records with IPONZ, you are at risk of not obtaining this correspondence and consequently losing your trade mark protection.

You can amend or update your contact details by lodging a request through the IPONZ online case management facility.

3. Monitor How Your Trade Mark is Used

To ensure that it continues to be regarded as a trade mark, monitor the way your consumers and general public use your mark. A third party could apply to court to have your registration revoked if your trade mark becomes a:

  • common name; or
  • descriptive term for your products or services.

Take the word “Escalator” as an example. This was originally a registered trade mark until 1950 but subsequently lost its trade mark status by becoming a generic term used to describe a motorised stairway.

4. Monitor Your Commercial Competitors

Be mindful that IPONZ is not responsible for monitoring trade mark infringers. As a trade mark owner, if you feel that anyone has misused or exploited your trade mark, it is up to you to take legal action. You should consider developing a strategy to avoid possible infringement, including:

  • retaining all documents relating to your trade mark ownership;
  • using watermarks or passwords on your trade marks; and
  • monitoring the activity and behaviour of your competitors regularly.

If you suspect that someone is violating or infringing your trade mark, seek advice from a legal professional about your options to deal with the infringement.

5. Ensure That You Use Your Trade Mark

Finally, when trading, you need to ensure that you are actively using your trade mark. This could be:

  • in advertising;
  • on your product packaging; or
  • on your website and social media pages.

Active use is necessary since a third party may apply to the IPONZ to have your trade mark revoked if you have not been using your trade mark for three years or more. This is aimed at prohibiting traders from registering a number of trade marks purely in order to discourage anyone from using them. It also prevents the register from becoming too ‘cluttered’ with unused trade marks.

Key Takeaways

You now have the responsibility to use and maintain your registered trade mark so that it remains protected. You can do this by:

  • using the ® symbol alongside your trade mark;
  • keeping your contact details up to date to ensure that you receive important information;
  • monitoring the public’s use of your trade mark to ensure that it has not become generic;
  • monitoring your competitors to ensure that no one is or has infringed on your trade mark rights; and
  • actively using your trade mark when trading.

If you have any questions, contact LegalVision’s trade mark lawyers on 0800 005 570 or fill out the form on this page.

FAQs

What does it mean to be a registered trade mark owner?

Answer1Being a registered trade mark owner means that you have the exclusive right to use the trade mark. You can also prevent others from using the same or confusingly similar trade mark.

What is the difference between the ™ and symbol ® ?

The ™ symbol indicates that you have a pending or unregistered trade mark. In comparison, the ® symbol indicates that your trade mark has been officially registered with the Intellectual Property Office of New Zealand (IPONZ).

How can you monitor your trade mark?

To ensure that it continues to be regarded as a trade mark, monitor the way your consumers and general public use your mark. A third party could apply to court to have your registration revoked if your trade mark becomes a common or descriptive name.

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