Trademarks are usually essential identifiers of your business, such as your name or logo. However, a trade mark’s efficiency lies in its uniqueness. Indeed, you cannot register a trade mark that is too similar to one that already exists. Therefore, a trade mark search is essential. For guidance, this article will go through six tips for conducting trade mark searches in New Zealand.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
Use IPONZ’s Resources
The Intellectual Property Office of New Zealand (IPONZ) is an official organisation that manages most matters relating to trade marks in New Zealand. When you apply to register your trade mark, they will be the institution you apply to. Accordingly, they maintain the nation’s trade mark register. Therefore, they provide the means to search that register, giving you two tools. These are the:
Once you have a clear idea of the elements of your trade mark, use these tools to see what already exists on the register. If something identical or similar already exists, you will not successfully register your trade mark.
Use ONECheck and Other Online Sources
However, IPONZ’s resources are not the only ones you should use to conduct your trade mark search. A general web search of your intended trade mark would be a good idea to see what comes up in the search engine ranking at first glance. This is useful because it can indicate what associated terms rank well with your trade mark, prompting ideas for adaptation.
Additionally, ONECheck is another online service you should use for your trade mark search. This tool searches various areas for your intended trademarks, including:
- business names;
- web domains; and
- social media.
Doing so gives you an indication of what others may already use in the space.
Continue reading this article below the formDo Not Use Descriptive or Common Words
If your trade mark needs to be more distinctive, IPONZ will likely reject it. Additionally, the more unique your trade mark is, the more definitive your trade mark search will be. For example, consider your trade mark uses:
- standard industry terms that your competitors may wish to describe their own goods or services; or
- generic or descriptive terms.
In that case, it can be difficult to register your trade mark, and you would need to seek assistance from a trade mark professional.
Search for Misspellings or Alternate Versions of Your Trade Mark
A trade mark search aims to determine whether a trademark like yours already exists. It also serves to show you the content associated with your trade mark. Therefore, to ensure your trade mark search is effective, look up common misspellings or alternative versions of your trade mark. This will widen your range to make sure unexpectedly similar trademarks do not catch you out.
Know What Goods or Services Your Trade Mark Will Apply To
When IPONZ determines whether trademarks like yours already exist, they will only search for marks under the same goods and services. Therefore, if you come across a similar trade mark that covers entirely different goods or services, you may still be able to register your trade mark. Your protective rights only apply to the goods or services you choose, so you should clearly know what these are when conducting your trade mark search.
Seek Help
While many resources are available to you as an individual for a trade mark search, help from a trade mark specialist assists you with the process. They will have conducted numerous trade mark searches in the past, so they will know particular methods for getting the best results. Additionally, they will likely have tools and search avenues that you may not. Following that, a trade mark specialist can help you prepare your trade mark application to ensure it meets IPONZ’s standards.
Key Takeaways
If you wish to register a trade mark, conducting a trade mark search is an essential step. You must complete this step to avoid IPONZ rejecting your application or inviting legal action from other trade mark owners.
If you need help with your trade mark search, 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
A trade mark is a kind of intellectual property right. It can protect an identifier for your business, such as your name or logo. If someone uses your registered trade mark without your permission, you have legal options available to you.
A trade mark does not necessarily have to be registered to have protective rights attached to it. However, these rights are more robust and more easily proven if you have registered your trade mark with the Intellectual Property Office of New Zealand. Further, a registered trade mark allows you to enforce your trade mark rights if someone infringes on your trade mark, making it a worthwhile investment.
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