Published: Thu, Feb 7th, 2019 by Lizandra Bailey

To Trade Mark or not to Trade Mark?

We often get enquiries from clients about applying for a trade mark to protect their brand name or logo.  So, we thought we would answer a few common queries:

What can I trade mark?

The Trade Marks Act 2002 allows the following to be registered as a trade mark:

  • Words
  • Images – e.g. logos
  • Shapes
  • Sounds
  • Smells
  • Colour
  • Any combination of the above

What is the point of getting a trade mark?

If you have a registered trade mark this will provide you with exclusivity in New Zealand for that particular word or logo in relation to a predetermined class and associated description of goods and services.  This means that no one else is able to use that word in relation to that predetermined class of goods or services.  Without a trade mark you can still take advantage of protections offered to you by the law of passing off and under the Fair Trading Act 1986.  However, you will need to provide evidence of use and that you have built up good will in relation to your unregistered trade mark.  If you have a trade mark, life is easier, the protection is automatic if someone is using the same or a similar trade mark.

Other advantages of having a trade mark include:

  • It can deter others from using a similar brand or logo
  • It can add value to your business
  • It can be bought and sold like any other asset

How hard is it to get a trade mark? 

Its not hard provided the word or logo you want to trade mark does not fall within any of the following criteria:

  • It is likely to deceive or confuse e.g. it implies that the the goods and services in respect of which the trade mark is registered, have characteristics which they actually don’t have.
  • It is not distinctive – in other words it is descriptive of the goods and services in respect of which it is to be registered.
  • It is in customary use – i.e. it is already in use by other traders.
  • It contains the commonly used names of chemical elements and compounds for chemical substances and preparations.
  • It is identical or similar to another trade mark.

Can I trade mark a word that someone else is using but has not yet been registered as a trade mark?

The answer is that you shouldn’t.  It is likely that it will be rejected by IPONZ as they do conduct searches via google etc.  You may also receive a cease and desist letter from the original owner of the unregistered trade mark.  Or worst case you may find yourself subject to a claim of passing off or engaging in misleading and deceptive conduct under the Fair Trading Act 1986 and could be sued for damages or subjected to fines.

What is the process for applying for a trade mark?

The first step is determining whether your brand name or logo is in fact able to be registered as a trade mark. 

The next step is to file for a trade mark with Intellectual Property Office of New Zealand (IPONZ).  In doing this you need to decide the class in which your brand name or logo should be registered and also the description of the goods and services which your brand or logo applies to within this class.

Once you submit your application IPONZ will review it within 15 working days of receipt.  If they have any issues with your application, they will provide you with a compliance report for you to respond to and which sets out their issues.  If there are no issues IPONZ will confirm to you that your application has been accepted.  The acceptance notice will then be advertised in The Journal.  If no one opposes the application within 3 months of it being advertised it will be registered no later than 6 months from the date of the application.

If someone wants to oppose your application, they must do so within 2 months of the date it was advertised in The Journal.  You can then file a counterstatement within 2 months of their notice of opposition.  If you don’t then your application will be abandoned.   If you do the opponent can file evidence in support within 2 months and you can then file evidence in reply.  There will then be a hearing after which the Commissioner issues a formal written decision.

How long does a registered trade mark last for?

A trade mark registration lasts for 10 years and can be renewed for further periods of 10 years.  You are able to request a renewal of your trade mark up to one year in advance of expiry of each 10 year period.

When can I use the or ® symbols?

The symbol can be used in relation to any unregistered trade mark.  It serves as notice to the world that you have intellectual property rights in the trade mark and may serve as a deterrent to anyone else using the same or similar trade mark.  However, it should not be used if someone else is already using that trade mark as to do so could put you at risk of a claim of passing off or a breach of the Fair Trading Act 1986.

The ® symbol can be used in relation to any brand or logo which is a registered trade mark but not otherwise.

How much does it cost?

IPONZ charge a fee of $150 plus GST per class.  We can assist you to determine whether you can your brand or logo etc is able to be registered as a trade mark and to determine the classes in which to register your trade mark and what description of goods and services you should use.  For more information about our fixed fee packages contact Lizandra Bailey by email at lizandra@turnerhopkins.co.nz or phone (09) 487 0018.

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Contact Lizandra Bailey
Phone: (09) 487-0018
Email: lizandra@turnerhopkins.co.nz

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