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Navigating trade mark infringement claims is a key element of protecting a brand’s intellectual property. It is, therefore, important that New Zealand businesses understand the legal landscape and implement effective strategies to handle infringement claims. This article will guide you through seven tips for handling trade mark infringement claims in New Zealand.
1. Conduct Comprehensive Trade Mark Searches
Conducting thorough searches is crucial before registering a trade mark in New Zealand. These searches ensure that the intended trade mark does not infringe on existing ones. The Intellectual Property Office of New Zealand (IPONZ) has a comprehensive database for conducting a trade mark search.
In the long term, you need to conduct trade mark monitoring regularly. This includes routinely checking for new registrations that might conflict with your existing trade marks. This approach lets you detect potential infringement issues early and take quick action.
2. Clearly Define and Register Trade Marks
Clearly defining and describing trade marks during the registration process is an important part of the process. Overly broad descriptions may be too ambiguous, making it challenging to enforce your trade mark rights in a dispute. As such, you should provide detailed and specific information to enhance the strength of your trade mark.
Another way to ensure a thorough trade mark application is to register multiple variations of your mark. This might include registering the same mark in different:
- colour schemes;
- fonts; or
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3. Monitor and Enforce Your Rights
You must regularly monitor the market for potential infringements. This includes examining competitors and online platforms more broadly for anything that might infringe on your rights. You should promptly address any unauthorised use of your trade mark to help maintain its distinctiveness.
You must also consider the importance of timely action when dealing with trade mark infringements. The quicker you address the issue, the better your chance of preventing further damage to your brand.
4. Gather Evidence
You must document instances of unauthorised use when you suspect trade mark infringement. This includes evidence such as:
- screenshots from websites; or
- any other relevant materials that demonstrate the infringement.
This evidence will be valuable in supporting your case.
5. Seek Legal Advice
Next, you should consider engaging trade mark lawyers early. Seeking legal advice early in the registration process can help you:
- assess the strength of your case;
- explore available courses of action; and
- provide guidance on the most effective strategies for resolution.
An experienced trade marks lawyer will also help you understand alternative dispute resolution methods, such as mediation, before pursuing litigation.
6. Prepare Cease and Desist Letters
If you identify trade mark infringement, you must consider sending a cease and desist letter to the infringing party before escalating the matter to legal proceedings. In such a letter, you must:
- clearly outline the infringement;
- provide documentary evidence; and
- request that the unauthorised use cease immediately.
A well-drafted letter can lead to a quick and cost-effective resolution. You should also seek legal advice when drafting cease and desist letters to ensure they are persuasive and legally compliant.
7. Treat Litigation as a Last Resort
Finally, litigation should be considered as a last resort. It should only be pursued after you have exhausted all other alternative dispute resolution methods. Again, an experienced trade mark professional can help you assess the viability of litigation by considering:
- the strength of your case;
- potential damages; and
- the overall cost-effectiveness of pursuing legal action.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
Navigating trade mark infringement claims is a key element of protecting the intellectual property of a brand. However, handling trade mark infringement claims requires a strategic approach. Some key tips for handling trade mark infringement claims include:
- conducting comprehensive trade mark searches;
- clearly defining and registering trade marks;
- monitoring and enforcing your rights;
- gathering evidence;
- seeking legal advice;
- preparing cease and desist letters; and
- regarding litigation as a last resort.
If your business has a trade mark that has been infringed and you would like help handling the matter, contact our experienced trademark lawyers 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.
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