How to Conduct a Trade Mark Portfolio Audit in NZ

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Table of Contents

• Compile and Organise Your Trade Marks
• Review Ownership and Assignments
• Evaluate Trade Mark Registrations and Renewals
• Conduct Trade Mark Clearance Searches
• Assess Trade Mark Usage and Market Relevance
• Review Licensing Agreements
• Monitor Trade Mark Enforcement and Brand Protection
• Key Takeaways
• Frequently Asked Questions

A comprehensive trade mark portfolio is a valuable asset for businesses operating in New Zealand. After all, it provides legal protection and exclusivity for your brand. However, as markets evolve and businesses grow, it is crucial to periodically review and assess the effectiveness of your trade mark portfolio. Conducting a trade mark portfolio audit helps identify strengths, weaknesses and potential areas of improvement. This article will take you through seven essential tips for conducting a thorough trade mark portfolio audit in New Zealand.

Compile and Organise Your Trade Marks

The first step in a trade mark portfolio audit is to compile a comprehensive list of your registered and unregistered trade marks. You must gather all relevant information, including:

• registration numbers;
• filing dates; classes; and 
• jurisdictions. 

You should then categorise your trade marks based on their importance, value and usage. This compilation provides a clear overview of your trade mark portfolio and helps identify gaps or redundancies.

Review Ownership and Assignments

During the trade mark portfolio audit, you must review the ownership of each trade mark to ensure accurate representation of your business entities. If your business structure has undergone major changes, you must update the trade mark registrations accordingly. This might include if it has undergone a merger, acquisition or rebranding. 

Additionally, you should assess any trade mark assignments or transfers to confirm that proper documentation is in place and recorded with the relevant authorities. Verifying ownership and assignments ensures that your trade marks have legal protection and that you possess the necessary rights to enforce them if infringements occur.

Evaluate Trade Mark Registrations and Renewals

Next, you must evaluate the status of each trade mark registration in your portfolio. This includes assessing the validity of the registrations and renewal dates. You should identify trade marks approaching their renewal deadlines to ensure timely action and avoid unintentional lapses in protection.

When deciding whether to renew or abandon certain registrations, you must consider each trade mark’s commercial value and significance. You may wish to eliminate any unnecessary or underutilised trade marks to streamline your portfolio and reduce maintenance costs.

Conduct Trade Mark Clearance Searches

Trade mark clearance searches are essential to assess the availability and potential conflicts of new trade marks before adopting and registering them. As part of your portfolio audit, you must consider whether you conducted comprehensive clearance searches for your existing trade marks. Then, you should reassess the search results to identify any conflicting marks that may have emerged since the initial registration.

By conducting clearance searches, you minimise the risk of infringing upon existing trade marks and protect your brand’s distinctiveness. Overall, this will help to strengthen the enforceability of your trade marks.

Assess Trade Mark Usage and Market Relevance

Next, you should evaluate your trade mark usage and market relevance within New Zealand. This requires you to analyse: 

• consumer perception; 
• brand recognition; and 
• the competitive landscape. 

You must also consider whether your trade marks accurately reflect your current business offerings and target market. Further, it is important to identify any trade marks that may have become outdated or irrelevant due to changes in your product or service offerings. You may wish to file new trade mark applications to cover new goods or services.

Review Licensing Agreements

If your business has licensed its trade marks, you should review the terms and conditions of these agreements during the trade mark portfolio audit. This includes checking compliance by licensees with the agreed-upon terms and restrictions.

At this stage, you should evaluate the effectiveness of these agreements in safeguarding your trade marks and maintaining their distinctiveness in the market. You may also decide if you will renew or modify any existing agreements.

Monitor Trade Mark Enforcement and Brand Protection

Finally, trade mark enforcement is critical for protecting your intellectual property rights. As such, you must review your trade mark enforcement strategies and evaluate their effectiveness. This requires you to assess any past or ongoing cases of trade mark infringement or unauthorised use.

Consider implementing proactive trade mark monitoring to identify potential infringements early on, such as regular trade mark searches. Taking necessary actions as early as possible will help protect your marks and maintain their exclusivity in the market.

Trade Mark Essentials in New Zealand

Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.

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Key Takeaways

Conducting a trade mark portfolio audit is a proactive approach to managing and protecting your intellectual property assets in New Zealand. Some key steps to follow for this audit process include:

• compiling and organising your trade marks;
• reviewing ownership and assignments;
• evaluating trade mark registrations and renewals;
• conducting trade mark clearance searches;
• assessing trade mark usage and market relevance;
• reviewing licensing agreements; and
• monitoring for trade mark enforcement and brand protection.

If you need assistance developing an audit strategy for your New Zealand trade marks, 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