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Intellectual property refers to assets that are ‘creations of the mind’ or the expressions of ideas. You can own it similar to owning physical property and receive many of the same benefits. Your sports or social club will have important intellectual property assets that you should protect, such as its trade marks. For some guidance, this article will go through six trade mark tips for New Zealand sports or social clubs.

1. Understand How Trade Marks Work

Intellectual property can be a complex area, and without a working understanding of how trade marks function, you are putting yourself at a disadvantage. This includes knowing what:

  • trade marks are;
  • rights trade marks give you; and
  • can qualify as trade marks within your sports or social club.

Trade marks refer to a sign that represents your organisation and what it provides. It can include a:

  • word;
  • phrase;
  • symbol;
  • picture;
  • colour;
  • label;
  • shape;
  • smell; or
  • combination of these.

You can prevent others from using your trade marks without your permission when you have trade mark rights.

2. Register Your Trade Marks

Trade marks can exist without formal registration with the Intellectual Property Office of New Zealand (IPONZ). Indeed, unregistered trade marks do grant you some legal rights, but it is much harder to prove these rights. For instance, if your sports club has operated with the same logo or crest for the past 20 years, it is sufficiently distinct enough, and people associate your club with it, then you may have an unregistered trade mark. You can use the symbol (™) to indicate your rights.

Regardless, registering your trade marks means that you can stop others from infringing on your property much more easily. It also grants you better protection across the country, rather than just relying on local recognition.

3. Register Trade Marks for Signs that Represent You

When it comes to registration, you want to choose important aspects of your sports or social club’s branding that are unique to you. Fans will distinguish you based on these aspects and may want to buy merchandise associated with your club. Proper branding can directly relate to supporting club pride and forming an identity, so you should protect it however you can. Therefore, you need to think carefully about what you should register. Examples include:

  • team names;
  • jerseys;
  • colours;
  • mascots;
  • nicknames; or
  • uniforms.

For instance, the Boston Red Sox have registered trade marks in their team name to protect their sports club.

For social clubs, you may indicate club membership through your branding or other aspects of your club. These may be useful to register as trade marks as well.

4. Make Sure Your Trade Marks Are Distinct

Your trade mark should be unique to you if you want IPONZ to accept it for registration. The greater its distinctiveness, the more likely it is that IPONZ will approve your registration. Therefore, your trade marks cannot:

  • be confusingly similar with a trade mark that already exists;
  • be too generic;
  • use terms or phrases common to your industry; or
  • just describe your goods or services.

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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5. Be On the Lookout for Counterfeiting

You may find that as your club grows and gets more popular, third parties may attempt to sell copies of your merchandise to make a profit. This practice can impact your own merchandise sales, which generate important funds to support your sports or social club. If you have registered trade marks that apply to your merchandise, you have stronger legal power to stop these counterfeiters. 

As such, you can send these parties an appropriate cease and desist letter to notify them of your rights. If they refuse or continue infringing on your rights, you have various legal options available to you as the original trade mark owner.

You can use the ® symbol to indicate to others that you have registered trade mark rights.

6. Register International Protection Where Necessary

When you register trade marks in New Zealand, these rights only apply within the country. If your sports club travels or participates in international competitions, you may then wish to register international protections for your trade marks. That way, you can guarantee protection in countries that are relevant to you. 

You can register specific trade mark protection using a particular country’s domestic system, but your trade mark will only apply in that country. Another way is to use the Madrid system, which allows trade mark registration in multiple countries. You can begin this process through IPONZ.

Key Takeaways

Trade marks can make up an important part of your club’s branding and identity, so it is vital that you protect them appropriately. If you would like more information or help with your sport or social club’s trade marks, contact LegalVision’s trade mark 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 kind of intellectual property. It refers to a sign or mark that represents your business/organisation and what you provide. Examples of trade marks could include slogans, logos, or specific shades of a colour.

What trade marks would my sports club need to register?

If another person using your trade mark could hurt your sports club, then you should consider registering it with IPONZ. Some examples include your uniforms/jerseys, colours, or mascots.

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