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Intellectual property is an intangible asset that you can own similar to other physical property. As a result, you can commercialise it and generate profit in a way that benefits your business. One kind of intellectual property includes trade marks, which you can register with the Intellectual Property Office of New Zealand (IPONZ) to gain various legal rights. However, to do so, your trade mark needs to meet specific criteria. Therefore, this article will provide some background and explain whether you can register a trade mark containing an abbreviation or acronym. 

What Is a Trade Mark?

A trade mark is a kind of intellectual property that protects any sign used to distinguish your goods or services from other traders. It serves as a “badge of origin” to identify the source behind the goods/services they are purchasing.

For example, if you register a trade mark for your business logo that you then print on your products, customers know that your business is the one that sells those products.

When you register your trade mark with IPONZ, you gain various legal rights for your trade mark. These include:

  • having an official record of your trade mark ownership, which may help to discourage  competitors from copying your trade mark;
  • preventing others from using  identical or similar  trade marks to yours;
  • the exclusive right to use and commercialise your trade mark concerning the goods and services it is registered for;
  • an official brand for customers to recognise your business; and
  • the ability to use the ® symbol next to your registered trade mark.

What Can a Trade Mark Contain?

However, before you can register your trade mark and gain these benefits, you must ensure it meets IPONZ’s requirements for registration. Trade marks can protect a wide variety of signs, including: :

  • words;
  • phrases;
  • symbols;
  • graphics;
  • sounds;
  • smells;
  • colours;
  • logos;
  • shapes; or
  • a combination of these.

The most common trade marks are word trade marks (such as your business name), image trade marks (such as your logo), or a combination of the two.

One of the requirements is that the trade mark must indicate a connection between your business and what it provides. Therefore, it cannot:

  • merely describe your goods or services; or
  • be a commonly used word in your industry.

Following these rules, you cannot register trade marks that are:

  • descriptive;
  • praiseworthy;
  • common surnames; or
  • referencing certain geographical areas.

For example, if you wanted to register a trade mark for drink bottle products, it would be difficult to register descriptive and industry-common words like “water” or “drink”. 

Notably, you also cannot register a trade mark that is identical to or deceptively similar to one that is already registered or that someone has already applied to register.

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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Can My Trade Mark Contain an Abbreviation or Acronym?

Abbreviations and acronyms are shortened words or sets of letters representing longer words or phrases. Examples of abbreviations include Dr. for doctor or km for kilometre. In contrast, acronyms include IPONZ for the Intellectual Property Office of New Zealand or MPI for the Ministry of Primary Industries.

Your trade mark can include words, so as long as it meets the previous paragraph’s requirements, and this can extend to abbreviations or acronyms. However, you must take extra care that they are not only descriptive and that customers would be able to establish a link between your trade mark and goods or services.

For instance, BMW is an acronym for Bayerische Motoren Werke (or Bavarian Motor Works in English), which is registered as a trade mark for vehicles. If your business has a similarly long name and uses an acronym as a shorter representation, registering a trade mark to protect that acronym would be wise. On the other hand, trying to register ‘OJ’ for a drinks brand would likely not be accepted, as other orange juice brands will need to use ‘OJ’.

Good trade marks are distinctive and unique. IPONZ is more likely to accept your trade mark if it is distinct from anything in the market, so put in the time to ensure your trade mark stands out.

Registering a Trade Mark

Registering a trade mark is an involved process, and getting legal help would be a good idea to avoid unnecessary complications. The entire approval and registration process takes a minimum of six months in New Zealand, so you should register your trade mark sooner rather than later. The steps for registering include:

  • deciding the exact nature of your trade mark and relevant goods/services;
  • conducting a trade mark search;
  • preparing necessary application documentation;
  • applying through IPONZ’s online portal;
  • waiting for IPONZ’s  response;
  • dealing with any objections raised by IPONZ; and
  • dealing with any oppositions.

Key Takeaways

The range of what a trade mark can protect is broad, but it needs to comply with certain requirements to qualify for registration. As long as your trade mark complies with these criteria, you can protect an abbreviation or acronym. 

If you need help with trade marks, 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

What is a trade mark?

A trade mark is a kind of intellectual property that protects any sign used to distinguish your goods or services from other businesses. Examples of trade marks include your business name or logo.

How long does it take to register a trade mark?

The exact time for registering a trade mark can vary according to the specifics of your situation. If there are objections to your registration, the overall process can be longer. However, the minimum length of time for registration is six months in New Zealand.

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