Branding & Trade Marks
Trade Marks – Protecting your Brand and Business Reputation
A trade mark is a legal term for what is more commonly known as a brand name. Trade marks are used to connect products or services with a trader so they serve as a badge of origin identifying the source of the products or services. As such, trade marks are closely connected with your business reputation, and should be protected.
Trade Marks can be words, logos, images, sounds, or smells that are connected with the products or services they are applied to.
Registering a trade mark confers a nationwide proprietary right to the use of the trade mark in respect of those products or services. It also provides the owner with some peace of mind as they cannot be accused of infringement by using their registered trade mark. A trade mark registration lasts for ten years and if renewed every ten years can last indefinitely.
The trade mark need not be in use at the time of filing but must be used within three years from the filing date to avoid a potential loss of rights.
Registration is generally done on a country-by-country basis but recently it has become possible to achieve registration on more of an international scale by way of the Madrid Protocol.
Trade marks are registered in New Zealand at the Intellectual Property Office of New Zealand. It is a separate procedure to company or domain name registration.
A trade mark is generally not registrable if it is descriptive of the goods or services you are trading in or not sufficiently distinctive, so when choosing a trade mark it is best to choose something that is not common to the industry, and that is not directly related to or associated with your goods or services.
A trade mark is also not registrable if there is an identical or confusingly similar mark already on the register in respect of the same or similar goods or services, so it can be a good idea to conduct a trade mark search prior to investing too much in brand development.
There are other rules regarding the registrability of certain trade marks such as surnames, place names, abbreviations, Maori words, foreign words, slogans, flags and emblems, and potentially offensive or deceptive trade marks, so if you are considering any such trade marks, you should seek advice first.
A trade mark is registered in relation to the goods and services that will be traded in. The goods and services are classified into certain classes via the Nice classification. There are 45 classes in total and it is important to choose the right classes at the time of filing. For an overview of the Nice classification please click here.
How Pipers can help you
Pre-filing advice: Prior to investing a lot of time and money on brand development or filing costs, we recommend that you seek our advice on the likelihood of your trade mark being registered. Our advice will generally be based on our knowledge of the types of trade marks which are registrable, and if requested, a thorough search of the relevant trade mark database/s.
Trade Mark filing, Prosecution and Registration in New Zealand and overseas: We will make the process of registering your mark as straight forward as possible in whatever countries you choose.
Trade Mark Opposition and Removal of a trade mark from the register: We can advise and assist you in these situations, irrespective of whether you want to oppose or remove a trade mark or whether you need to defend a challenge against your mark.
Infringement advice: We can provide you with advice on how to avoid infringing another trade mark, or on what to do if you think someone is infringing your rights.
Enforcement action: We can help you enforce your trade mark registration where someone is infringing your trade mark.
For more on trade marks please see our FAQ’s section on the right.