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A trade mark is a sign that represents your business, ranging from your business name to a slogan or logo. When you own a trade mark as an intellectual property asset, you have various rights attached to that ownership. For instance, you can prevent others from using your trade mark. Notably, some trade marks rights can exist without registration. Still, you have more robust protection if you apply to the Intellectual Property Office of New Zealand (IPONZ) to register your trade mark officially. However, this process can be complex and potentially confusing if you have never done it before, so you should seek aid where necessary. For some guidance, this article will go through four mistakes to avoid when registering a trade mark in New Zealand.

Registering a Trade Mark You Do Not Need

Some intellectual property assets are vital to your business, so you should protect them however possible. Registering brand assets as trade marks is one way that you can protect your intellectual property. These are assets unique to your business that bring value to it, whether that be in the form of:

  • market recognition;
  • royalties;
  • income;
  • customer retention; or
  • other benefits.

For example, if your new business name is unique to your business and draws customers, you should register it as a trade mark to prevent others from stealing it.

However, to take advantage of the rights that a registered trade mark gives you, you need to maintain that trade mark over its lifetime at your business. This process entails:

  • using your trade mark;
  • renewing your trade mark;
  • paying fees; and
  • pursuing those that infringe upon your trade mark.

If you do not use your registered trade mark, this is an unnecessary cost to your business. Additionally, you can also open yourself up to trade mark revocation, which may lead to costly legal proceedings. Therefore, before you register, you need to ensure your trade mark is worth the cost and that you will use it.

Failing to Conduct an Adequate Trade Mark Search

When you apply to register your trade mark, you cannot register a trade mark that already exists for the same or similar goods or services. If another business has registered a sign that is confusingly similar to yours, IPONZ likely will not approve your application.

For example, say that you want to register your business logo, but a similar logo already exists, just in a different colour. In this case, they may be too confusingly similar, and your trade mark registration may not be successful.

To maximise your success when applying for registration (and avoid potential infringement claims or opposition proceedings for using or attempting to register someone else’s trade mark), you need to conduct a trade mark register search. This process will reveal any similar trade marks that other businesses have registered. In particular, it is relevant to note the use of similar trade marks in your industry. 

Notably, you can use the online tool ONECheck to search for existing trade marks similar to yours. However, a lawyer can also help you conduct a thorough search, as they will also know what words and phrases to search that may relate to your trade mark.

Trying to Register a Descriptive Trade Mark

The more distinctive and unique your trade mark is, the more likely IPONZ is to approve it. If it is original, then customers are more likely to recognise it as a badge of origin for your business, and other traders lacking improper motive are less likely to need to use it to describe their similar goods or services.

Your business may fall short of this requirement if you attempt to register a solely descriptive trade mark. This trade mark mainly describes the sign that it applies to or is a generic word in your industry.

For example, attempting to register the word “MUG” for your coffee cup brand may be unsuccessful because mug is another descriptor for coffee cups. If registered, this would limit your competitors’ ability to use this common word with their own coffee cups. Even if you successfully registered a name such as this, it may be difficult to enforce your trade mark. A competitor may have a defence against infringement by saying they were simply describing their goods rather than referring to your registered mark.

You also may not be successful trying to register:

  • words that just praise your goods;
  • common characteristics of your goods;
  • certain locations or places; or
  • common surnames.

Applying for a Time-Sensitive Trade Mark

Applying for a trade mark and successfully registering it can be a long process. If you do not account for this, you may operate with an unregistered trade mark that lacks adequate protection, and you can open yourself up to infringement action without the defence of a registered trade mark to rely on.

Therefore, before you start operating with a certain trade mark, you need to account for the time it takes to register. Typically, this process can take about six months. However, there is a period where third parties have a chance to oppose your trade mark. If there is opposition by a third party or objection from the trade marks office to resolve, this can delay the process.

Key Takeaways

A trade mark can be a valuable asset for your business, as long as it is distinctive and has identifiable benefits. Before applying to register, conduct appropriate research so that you can minimise delays and mistakes. If you would like more information or help with avoiding common mistakes when registering your trade mark, contact LegalVision’s IP lawyers on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a sign that represents a particular aspect of your business, and in most cases, it is a valuable intellectual property asset. What it applies to can vary, but common examples include business names or logos.

Should I register a trade mark for my business?

If a unique branding asset brings value to your business, then you should consider registering it as a trade mark. A distinctive trade mark can be a good way to make you stand out amongst competitors, and you should protect your important ideas. However, only do so if you will actively use that trade mark.

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