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A trade mark is a unique signifier for your business. Trade marks connect your business to the goods or services you provide, serving as a way for your customers to remember you. Their value is in their uniqueness, so the law protects this when you register your trade mark. As a result, completing an efficient trade mark search is vital to ensure your trade mark is not the same as anyone else’s. Therefore, this article will explain why you need to complete a trade mark search in New Zealand.

What Is a Trade Mark Search?

Completing an appropriate trade mark search is a vital step in the trade mark application process. When you do this, you are looking for other trade marks that are identical or similar to the one that you wish to register. As a result, you will be comparing existing trade marks in the market with your own.

Trade marks are an important part of a business’ branding and image. What can make up a trade mark can vary and can include:

  • words;
  • phrases;
  • shapes;
  • sounds;
  • symbols;
  • colours;
  • images; or 
  • a combination of these.

Therefore, in a trade mark search, you will be looking for trade marks that contain similar elements to your own and protect the same or similar goods or services.

For instance, a trade mark search would help you determine whether someone has already registered a business logo with similar imagery to your own.

The complexity of your trade mark search can vary according to your needs, but you should complete this step if you wish to successfully register a trade mark.

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Why Should I Complete a Trade Mark Search?

When you apply to register a trade mark with the Intellectual Property Office of New Zealand (IPONZ), they will assess its suitability based on their criteria. One of these is that your trade mark is not identical or confusingly similar to an existing one that protects the same or similar goods or services. 

Accordingly, conducting a trade mark search before you submit your application will help you reduce the likelihood of registering a trade mark that is similar to one that already exists. All registered trade marks are on a public register, so you can conduct an initial search yourself  to find out what elements of your trade mark may already be registered for the relevant goods or services. 

A trade mark search can also show what trade marks and branding your competitors use in your particular market. Following that, this can help you in your own application, such as determining how to classify the goods or services you want your trade mark to protect.

Additionally, if you do manage to register or use a trade mark that is similar to one that already exists, you run the risk of trade mark infringement claims from the party that owns that trade mark. Therefore, to both improve the success of your trade mark registration and protect your own business, you should complete an appropriate trade mark search.

How Can I Do a Trade Mark Search?

Fortunately, there are many tools and resources you can take advantage of for your trade mark search. In particular, IPONZ provides two tools for searching the public trade marks register, the:

  • Trade Mark Check; and
  • Trade Mark Case Search.

With Trade Mark Check, you can search for similar word or slogan trade marks that exist on the register, with filters for the goods or services you wish to narrow your search to. Notably, you can also upload a logo or image to search image-based trade marks. Conversely, Trade Mark Case Search lets you search for specific trade mark cases by:

  • case number; 
  • owner;
  • date; or
  • other identifying details.

On top of using IPONZ’s search tools, you should also conduct a general web search for your trade mark. Doing so lets you know what content follows your trade mark, and the potential existence of unregistered trade marks. You can also use ONECheck for a more generalised search relating to the trade mark you wish to register.

For a greater chance of IPONZ approving your trade mark registration, you should not use descriptive words for your trade mark, particularly those common to your industry. A general web search can show you common words in your industry.

Key Takeaways

A trade mark search is a fundamental step of the trade mark application process. Without completing this evaluation, you run the risk of IPONZ not approving your trade mark due to its confusing similarity to a trade mark that already exists. Additionally, you could be inviting potential infringement claims if you register a trade mark that someone already has rights in. A good trade mark search can help you avoid this by showing you what trade marks already exist.

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

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.

Why should I complete a trade mark search?

If you wish to register a trade mark, your trade mark cannot be identical or confusingly similar to one that already exists. Therefore, you should complete a trade mark search to see what already exists in the market.

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