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Trade mark rights exist as essential identifiers for your business. Therefore, you must maintain them appropriately. You do not necessarily have to register your trade mark to gain legal rights. However, if you are the victim of someone copying your trade mark, it will be easier to defend your position if you are the registered owner.

This article will explain trade mark infringement and some options available for you if you fall victim to it.

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What is a Trade Mark?

Firstly, trade marks are a type of intellectual property in your business. Therefore, you must understand what they are and what you must do to maintain them appropriately.

Trade marks can consist of various elements, including:

  • words;
  • phrases;
  • symbols;
  • labels;
  • sounds;
  • shapes;
  • colours;
  • smells; or
  • any combination of the above.

They connect your business to the goods or services you provide. Furthermore, they help your customers identify your brand. As a result, trade marks serve as a “badge of origin” which can form a critical part of your business reputation and branding strategy. 

For instance, you can register a trade mark for your business logo. So, when you use that logo on your product packaging, customers will recognise that the product comes from your business. Essentially, trade marks distinguish you from your competitors.

What is Trade Mark Infringement?

One notable benefit to registering your trade mark includes a formal acknowledgement that it belongs solely to your business. Moreover, only your company can use it.

Your trade mark is unique in the market, so your customers will associate it with you.

If someone were to copy your trade mark or use one similar, it could confuse your customers and undermine your exclusive rights over your brand. 

The term ‘infringement’ refers to a situation where someone else uses a trade mark that could deceive or mislead customers because it is: 

  • identical or deceptively similar to yours; and 
  • they use it in respect of the same goods or services which your registered trade mark covers

Even if their trade mark does not concern the same goods or services, you may still be able to validly claim trade mark infringement if your trade mark is so well known and distinctive in New Zealand.

For instance, consider someone who copies your business’ T-shirt merchandise and starts selling clothing with your printed logo without your permission. This could qualify as trade mark infringement.

What Should I Do If Someone Infringes on My Trade Mark?

Trade mark infringement can negatively impact your business. As such, it would help to take swift action where necessary. However, many potential trade mark infringement cases do not result in formal legal action. Therefore, if you respond to potential infringement appropriately, you can avoid the costs associated with litigation.

Further, if someone infringes your trade mark, it would be wise to seek legal advice from an experienced trade mark specialist. They can help you determine the best action to resolve the issue while avoiding unnecessary hassle or costs.

Additionally, when you register ownership rights over your trade mark, it will be easier to deal with trade mark infringement. Depending on the nature of the infringement, simply notifying the other party of your trade mark rights may be enough of a deterrent. Such notification may take the form of a letter of demand or other formal communication.

You can also use the ® symbol to indicate your registered trade mark rights.

If the other party refuses to cease the infringing conduct, litigation may also be a valid option depending on your situation and the facts of the case.

Potential Remedies

If your case of trade mark infringement ends up in court, various options are available when determining how you should receive appropriate compensation. These remedies include:

  • injunctions;
  • monetary damages;
  • the destruction or seizure of the offending goods and promotional materials; and
  • orders to account for profits.

In some cases, trade mark infringement for commercial gain can lead to a conviction for the wrongdoer. Counterfeiting or brand piracy can result in a prison sentence of up to five years. Alternatively, you could receive compensation of up to $150,000.

Key Takeaways

Trade marks are essential identification tools for your business. They help your customers recognise the goods or services you provide. However, if someone else uses a trade mark identical or similar to yours, this may qualify as trade mark infringement. This act can negatively impact the value of your own trade mark, so you must deal with it accordingly. 

If you need help registering a trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. 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 unique sign that links your business to the goods or services it provides. Examples include your business name or logo.

What is a trade mark infringement?

If someone copies your trade mark or uses one similar to yours, it would confuse your customers and can qualify as trade mark infringement. Generally, the offending trade mark should protect the same goods or services, but if your trade mark is popular across New Zealand, it may receive broader protection.

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