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Trade marks can protect various aspects of your branding. They protect the uniqueness of your business’ branding, so it is worthwhile to consider registering one. For some guidance, this article will provide some background and explain whether it is possible to use your New Zealand trade mark for any product.

Trade Mark Registration

Trade marks are a form of intellectual property right that serves as a ‘badge of origin’, linking the goods and services you provide to your business. It distinguishes your business from others, which is crucial for ensuring that customers notice and remember you.

For example, if you have registered trade mark rights in your business logo, which you print on your product packaging, customers know that your business is the source of those products. If someone tries to copy your logo, your registered trade mark rights give you options for stopping them.

You do not necessarily have to register your trade mark to gain subsequent rights. However, your legal protection is more robust if you register your trade mark with the Intellectual Property Office of New Zealand (IPONZ). They assess your trade mark according to their criteria, evaluating whether:

  • the trade mark can sufficiently distinguish your goods from other businesses;
  • it is not descriptive or praiseworthy of your goods;
  • it is not identical or similar to an existing trade mark registration or application; and
  • other relevant considerations.

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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How Can Trade Marks Protect My Products?

If your trade mark is successfully registered with IPONZ, you gain various rights that can protect your products. These include:

  • the exclusive right to use and profit from your trade mark throughout New Zealand;
  • the right to license your mark to third parties for compensation;
  • the ability to use the ® symbol next to your trade mark;
  • the ability to pursue third parties for trade mark infringement; and
  • an official record of your trade mark on the public trade marks register.

Classifying Your Trade Marks

As part of your trade mark application, you must specify which goods or services you wish for your trade mark to protect. This step is crucial, as it defines which areas you have enforceable trade mark rights over and which areas you do not. Following that, you must categorise these goods into their corresponding classes. There are 45 classes in total, with classes 1 to 34 applying to goods and classes 35 to 45 applying to services. 

For instance, if you want to use your trade mark for your skincare products, you may register it under class 3 for cosmetics and soaps.

You need to think carefully about what classes of goods you want your trade mark to protect. More specifications mean more protection, but it also costs more. Your trade mark application generally costs $100 per class that you register for. However, you can take advantage of the various discounts IPONZ provides if you use their pre-approved specifications when describing the goods that your trade mark protects.

Can I Use My Trade Marks for Any Products?

It is best to be as specific as possible when choosing the products you want your trade mark to protect. You cannot overrepresent what you want your trade mark to apply to, but you limit your protection if you miss key specifications. 

An experienced trade mark specialist can help you determine the full range of goods you wish to register trade mark rights for. IPONZ also provides resources on their website to help with this process.

However, you cannot arbitrarily register your trade marks for goods you do not intend to apply it to. If you are vague in specifying what products you wish for your trade mark to protect, IPONZ may require further clarification. This could also put you at risk of losing your trade mark in the future if you do not use it for the goods that you have registered it for.

Additionally, when assessing your trade mark, IPONZ compares it to other trade marks that exist concerning the products you want to register it for. Therefore, if similar trade marks already exist for certain products, you may not be able to register your trade mark for those goods.

Crucially, if your trade mark specification is too wide, this can cause problems for IPONZ and future trade mark applications. It limits what trade marks IPONZ can register in the future. Correspondingly, it needs to be commercially realistic that you will use your trade mark for the goods you specify.

Key Takeaways

Your trade mark protects the types of goods you specify when registering it. However, if your specifications are too broad, you may need to provide further clarification to IPONZ. Further, you could risk having your trade mark removed by a third party if you do not actually use your trade mark for the goods it covers.

 If you need help with your trade mark specifications, 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

What is a trade mark?

A trade mark is an intellectual property right that protects a mark or sign that distinguishes  your business from others. This usually forms a part of your branding, such as your business name or logo.

How can I register a trade mark?

You can apply to register a trade mark with the Intellectual Property Office of New Zealand (IPONZ). They will assess your application based on their criteria and approve it if it meets those criteria.

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