I P / I N N O VAT I O N
10Things you
need to know
about trade marks
A trade mark is the legal term for what you might think of as a "brand"— the name of your business, or the
name of a product or service you are offering. Trade marks distinguish one trader's goods and services from
the rest, so they are important assets. If you are launching a new business or product, some early planning on
how you will choose and protect your trade marks will safeguard you in the future and avoid potential legal pitfalls.
D o n ’ t f a l l i n l o v e t o o f a s t . It’s easy to
become attached to a brand name. Before you commit to
using a new trade mark, it’s wise to make sure no-one else is
using it or has registered it as a trade mark. Otherwise you
could be at risk of infringing their rights (and find yourself
facing an injunction). A trade mark expert can perform a
thorough availability search and identify any obstacles your
new mark might face.
B e d i f f e r e n t . It will be easier to register your trade
mark and easier to stop other traders using a similar mark,
if you choose something distinctive. This means it doesn’t
describe the goods or services you provide – like, “YELLOW”
for bananas – and it isn’t used generically in the industry.
Although it’s tempting to pick a mark that tells consumers
exactly what the product or service does, these kinds of marks
are tough to assert ownership of.
R e g i s t e r y o u r t r a d e m a r k . Registering your
mark with the Intellectual Property Office of New Zealand will
probably cost you a few hundred dollars (perhaps more), but
it is worthwhile. If you haven’t yet started using your mark,
obtaining a registration is a valuable “placeholder” to put
other traders on notice that you own the mark and deter them
from using a similar one themselves. Owning a registration
also acts as a defence against trade mark infringement
proceedings from other traders (although not against other
Fair Trading Act and common law proceedings), and gives
you standing to bring infringement proceedings against
anyone using your mark without permission. Registrations
last 10 years at a time and can be renewed indefinitely. The
oldest surviving trade mark registrations in New Zealand date
back to the mi N ???HHH?HHH H??H ?H? ?HH ? ?YHX\???Y?\? ?][??? H ??X? [?\?X\???? H??? ?[???\??X?\? [?H ??YH8?%??[??[??KY? ??Y[?H[ ?H \?\?B??\?Z[? ?YHX\???? Z\?]]? ?\Z\? ?\??X?\? [?HZY? ??[?H??YH ? \?H[? ?Y?\?\?]?? [?\??X]] H \?\ B??\??X?\????[??[?K??Y?\? ?][??\?H?\??Y?YYX???[?? ?]??? ?[? ?\??X?\? ^H??\?8?%??[??[??HY? [?B??L??\?H [?\? ?YHX\??[? ?[][? ???[?? [?H ??[ ?Y?\?\??][??\?? ?K?X[?H ?YHX\?? ?Y?\? ?][????\?][ \B??\??\??? ?\?[?\???? ?[? ?\??X?\???HH H H H ? ?HH ?Y? ??Y[?H?[[??\? [?\?? ?YHX\??? ?Y\? ?XZ?H [?H ?? \?[??] [?\??[??\?? ?X??\??X^H??YH?? ? H ?X?? ? [?H?Y\ ??[?[??Y?[ ???YY[????\? ?YHX\???]\??X?X[ ?\?X?\?????\?? \?YH \?X?[\?X\??[? ?]\? Z\?X\??\?H ?\ ]][?[??]??X[[? ??X?? ?? ?[? [?H ?\?Y?\?[?? [?\? ?YHX\????]X? [?H]?H ?[?XX? YX\???Y ?\?\?[??][???X[?H ?[\?? ?? X? ?? ?\??X?\?]?H?Y[?\????X]Y ?] HX\??\?H[ ?[ XX?H YX?\???[???X][??[?HX^H?]?\??YY] ?]Y? [?H? [?H ?[?B??Y [?H?\ ?X??? \?H]Z[ ?] H [YK??H ?HH ? ?? ?HH ?]8?&\??[?H ? ?Y?\?\?H ?YHX\??]?[?Y? [?H]?[??&] ?\?Y \?[??] Y] ??]Y? [?H??&] \?B?][??]??X[[? ?][? ?YH YX\???] ? ?Y?\? ?][?]K?[?\?X\???[??X??YH ?[?\?X?H ? ?]???][???\?X?[ K???Y[?H[ ?H?[?\ H ? H ?YHX\?????X?H ?]?H [?\??X\?? Z?[??? H ?Y?\?\??^HZY? [? ?Y?\?\? HX\?[\?[ ?\?[??Y?[? \?[??] ?Y? [?H [?? [?\?X\??ZY? ??