A trade mark registration is one type of intellectual property (IP) protection you should consider to protect the intangible assets of your business. Trademark registration allows you to distinguish your goods or services in the market, bringing several legal benefits. If you operate your business in New Zealand, this article will take you through three legal reasons to register a trade mark with the Intellectual Property Office of New Zealand (IPONZ).
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
What is a Trade Mark?
A trade mark helps to distinguish elements of your brand from others.
Trade marks can take several forms, including a:
- word or phrase;
- image;
- scent;
- shape
- colour; or
- combination of the above.
Registered vs Unregistered Trade Marks
Unregistered trade marks still have legal protection in New Zealand. This means it is optional that you register your trade mark. However, it can be challenging to demonstrate that you have rights to an unregistered trade mark. As such, if someone else tries to use an identical or similar mark to yours, it can be difficult to enforce your rights. To have ownership rights over an unregistered mark, your trade mark should:
- have a solid reputation in the market; and
- be identifiable by consumers as representing your brand.
Some ways you can demonstrate this include:
- customer testimonials or media reports on your products;
- sales and advertising materials; or
- reviews of your products using your trade mark.
On the other hand, registering your trade mark provides more excellent legal protection and a more streamlined way for dealing with those who use your mark without your consent. As such, if you use your trade mark in New Zealand, it is recommended that you register it with the IPONZ.
Continue reading this article below the formLegal Reasons to Register a Trade Mark
Exclusive Use
When you register a trade mark, you gain the exclusive right to use your mark for the goods and or services it is registered for. This means you can pursue legal action against anyone using your trade mark or a similar trade mark without your permission.
If you have a registered trade mark, you can prove to the person who is using your mark without your permission that the mark is yours. Indeed, if they do not cease using your mark, you can take steps to enforce your rights, such as taking the matter to court. Additionally, if your trade mark is unregistered, it can be harder to prove that you have any rights to the exclusive use of the logo. Demonstrating these rights can be expensive and take a long time, harming your brand.
License Your Mark
Another excellent legal benefit of registering a trade mark is that you will have the ability to license your trade mark. This permits you to charge others fees for the use of your mark. Further to being an additional revenue stream, licensing is also a great way to increase awareness of your mark amongst the public. Having a registered trade mark is a critical step in creating licensing agreements.
Selling Your Mark
Thirdly, registering your trade mark gives you the right to sell your trade mark. You may choose to sell this mark to another person or business. Through a contract of sale, you transfer all rights to the mark to the party who buys it.
Under New Zealand trade mark law, selling a registered trade mark requires an assignment. This is the process of recording the trade mark’s ownership change with the IPONZ and is only available to registered trademarks or current applications, including trademarks with the ‘Registered – Past Expiry Date’ status.
Key Takeaways
Further to the marketing benefits of a trade mark, there are many legal advantages that you should consider. This includes providing you with exclusive rights to:
- use your mark;
- license your mark; and
- sell your mark.
If you have any questions about registering a trade mark in New Zealand, our experienced intellectual property 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
Some of the legal reasons to register a trade mark include that it provides you exclusive rights to use your mark. It also provides you with the right to license and sell your mark.
Unregistered trade marks still have legal protection in New Zealand. This means that you can register your business trade mark without registering your business trade mark. However, it is much more difficult to demonstrate you have sufficient rights in an unregistered trade mark. As such, if someone else tries to use an identical or similar one, it can be difficult to enforce your rights.
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