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Trade marks protect unique identifying representations of your business, such as your name or logo. They link your goods and services to your business, providing a frame of reference for your customers. As such, they are a valuable asset that you need to duly consider to ensure you maximise their protection. However, this process can become murky when you operate in digital spaces, where specific words can draw customers to your business from a search engine. Therefore, this article will provide some background and explain if you can register a trade mark for a common keyword in New Zealand.

What Are Keywords?

A keyword is a fundamental word that describes your goods or services (or a particular aspect of them). In an online context, these are words that people may type into an online search engine that are related to your business and the products or services it provides.

For instance, if you sell pens and other stationery to customers, “writing” or “stationary” may be a relevant online keyword.

Keywords are crucial for online marketing. When a customer searches for a specific term online that relates to your business, you want your website to be one of the first pages that they see.

As a result, search engines like Google offer services (such as Google Ads) that let you bid on certain keywords to improve your chances of your website advertisements being one of the first results in a search using those words. The more money you bid, the higher your ranking on those keywords.

For example, businesses will try to bid high on their own names in Google Ads to ensure that other businesses cannot steal customers from their specific word. 

This process raises certain issues related to trade marks, as some keywords may have applicable trade mark rights. Whether you can register a trade mark for a common keyword in New Zealand depends on various factors that largely relate to the nature of the trade mark itself.

What Can Qualify as a Trade Mark?

Trade marks are unique aspects of your branding that link your business’ goods or services to you. As such, they can include:

  • words;
  • phrases;
  • slogans;
  • symbols;
  • labels;
  • sounds;
  • shapes; or
  • any combination of these.

When you have trade mark rights, you gain various legal benefits. You can prevent others from using your trade mark for their own gain, and discourage other businesses from trying to register similar or identical trade marks. To successfully register your trade mark, you need to do so through the Intellectual Property Office of New Zealand (IPONZ), which assesses your trade mark against specific criteria.

Distinctiveness and Your Competitors

One part of this criteria relates to the distinctiveness of your trade mark and whether it is too generic to refer to your business alone. If your trade mark is too descriptive or generic, IPONZ is less likely to accept your application. Such marks can include those that might describe your product’s:

  • kind;
  • intended purpose;
  • quality;
  • value;
  • geographical origin; or
  • particular characteristics.

IPONZ will not register such descriptive terms because this will prevent your competitors from using those terms to describe their goods or services in your industry. Therefore, whether you can register a trade mark in a common keyword will depend on the nature of the keyword itself. If it is too common, and people use it as a part of everyday conversation to describe the goods or services your trade mark relates to, IPONZ likely will not accept it as a trade mark.

Trade Mark Essentials in New Zealand

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For instance, if you tried to register a trade mark for the word “music” concerning your speaker products, you would not be successful in your application. This is because your competitors would need to use the word “music” to describe the functioning of their speakers. You cannot use trade mark registration to monopolise its usage in this case.

Conduct a Thorough Trade Mark Check

If a competitor has already registered trade mark rights in a particular distinctive keyword, you cannot register rights yourself in this word. This is unless you have a better claim to ownership. Therefore, the preliminary search and checking process before registering your trade mark becomes crucial for determining what keywords already have registered trade mark rights applying to them. 

This search can also help you determine what common keywords your competitors use to describe their goods. If you see them using a particular keyword frequently to describe their goods or services, then it may be less likely that you can register trade mark rights in that keyword.

Notably, you may be able to use keywords from other industries in your trade mark. For instance, registering the word “Cardamom”, a food-related keyword, to represent your bookbinding business may be enough of a distinction to differentiate your business. This is because other bookbinding businesses are unlikely to need to use the 

Key Takeaways

Whether you can register a trade mark for a common keyword hinges on the nature of the keyword itself. If it is a common keyword that your competitors may use to describe their goods, your application for registration is unlikely to be successful.

If you need help with your trade mark registration, 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 a kind of intellectual property right that protects something that identifies your business and the goods or services it provides. Common examples include your business’ name or logo.

Can I register trade mark rights for a common keyword?

If a keyword is too common and one that your competitors may use to describe their goods or services, you likely will not be able to obtain trade mark rights in that word. However, you may be able to use common keywords from industries outside of your own for your trade mark.

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