When growing your brand for your business, you should seriously consider how you will protect that brand. You can do that by registering your brand as a trade mark. A trade mark is a form of intellectual property with certain legal protections attached. It grants you exclusive ownership of whatever you decide to trademark. This could include:

  • your business name;
  • your logo; or
  • the sub-brand used in relation to a specific product you sell.

However, you should note that deciding to register your trade mark to get this protection is not a simple process. There are specific requirements you need to fulfil before you can register your trade mark, and if you do not do this correctly, this could lead to issues in the future. This article will explain what you should be aware of before applying for a trade mark registration.

Preparing to Register

First, you need to consider whether you are ready to register a trade mark for your business. You can do this at any point in your business’s life, but it is a crucial step, nonetheless. Does your trade mark match the vision you have for your business? What happens if you want to change it? This is a long-term undertaking (you can renew your trade mark every ten years) that involves the continuous maintenance of this trade mark. Such maintenance will include:

  • paying renewal fees;
  • registering other marks for your brand as necessary; and
  • pursuing other conflicting trade marks or brands through legal action.

If you do not use your trade mark within three years of registering it, then someone else can apply to revoke it.

You need to have a clear idea of the type of trade mark you want, and specify the legal owner. The legal owner can be an individual or a company, and that will affect your business’s legal relationship with the trade mark in the future. Trade marks can be a lot of things, but are typically:

  • words;
  • images; or
  • a combination of the two.

Specify the Scope of Your Trade Mark

When you apply to register your trade mark, you need to include details of what classes of goods and services it will apply to. This determines what your trade mark protects. You have to figure this out and decide beforehand what kinds of products or actions your trade mark will cover. 

For example, if your trade mark is the logo on the moisturiser your business sells, then you would choose class 3 (“cosmetics”) as one of your classes.

The application fee will depend on how many different classes apply to your trade mark. The Intellectual Property Office of New Zealand (IPONZ) has an online classification tool, which you can find here.

You need to be honest about what classes your trade mark covers and be clear. Do not use vague words such as ‘etc.’ when filling out the classifications on your application form. These classes also only apply to your trade registration content, not how you intend to use the trade mark in your trading.

For example, you would not specify how you plan to display your trade mark on products you sell when detailing your classes.

If you are unclear about what classes your trade mark covers, you risk the trade mark not being adequately protected or IPONZ rejecting your application. A trade mark specialist can help you with this process.

How Distinctive Is Your Trade Mark?

When considering your application, IPONZ will note how distinctive and original an your trade mark is. The more distinctive it is, the better the chance of IPONZ accepting your trade mark for registration. If your brand is too generic or too broadly descriptive of the goods or services you provide, you run the risk of IPONZ rejecting your application. It is a good idea to avoid common words or slogans, or those that may be mistaken for other brands. Further, coming up with something unique can make you stand out in the market.

For example, naming your clothing brand “Clothez” would be too generic (i.e. not distinctive enough), and too descriptive of the products you sell.

If other traders are likely to have a legitimate need to use the same or a similar term to describe their similar goods or services, then your trade mark is unlikely to be eligible for protection.

Similar Trade Marks

Before registering, you should check your competition to ensure that your trade mark does not already exist, or is not too similar to one that does. If it is, then IPONZ likely will not accept your application. You can do an initial search on the IPONZ website here. Look for words or phrases similar to your intended trade mark, rather than identical trade marks. A trade mark specialist can help you make sure that this search is comprehensive and you avoid attempting to register a trade mark that already exists.

If you find a similar one, you should rethink what you want your trade mark to be. You can use the knowledge you gain from checking other trade marks to develop your own distinctive one.

Key Takeaways

Registering your business name or logo as a trade mark is a good way to ensure your intellectual property rights are legally protected. But, it is not a process to undertake lightly, and you should make sure your application is accurate and correct before you submit it to IPONZ. If you would like more information or help with your trade mark application, contact LegalVision’s New Zealand IP lawyers and attorneys on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a sign or symbol that you use to identify your business, and distinguishes you from other businesses in the market. Your trade mark could be your business name or logo.

How do I register my trade mark?

You register your trade mark by filling in an application with the Intellectual Property Office of New Zealand (IPONZ). If it is distinctive enough and distinguishable from other business’ trade marks, IPONZ will likely approve your application for registration. Then you will have exclusive ownership of your trade mark in respect of the goods and services covered in your registration.

Should I register my trade mark?

It is generally a good idea to register your trade mark because it grants you exclusive intellectual property rights. This means that you can stop other people from using your trade mark or similar ones.

How long does it take to register a trade mark?

After submitting your application, IPONZ will contact you within 15 working days to let you know whether your application is in order to proceed to acceptance, or if there are issues to be resolved before they can grant acceptance. Once your trade mark application is accepted, IPONZ advertise it for third party opposition purposes. If there are no oppositions to your application for three months after it is advertised, it will be registered (after a minimum of six months from the initial filing date).

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