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Protecting Your Brand
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By: Charlene Sell
One of the biggest assets of any business is its brand. Brand awareness within your target market is one of the key factors determining your business' success.
This means it is important you take steps to protect your brand. One way of doing so is to register your trade mark.
What is a trade mark?
A trade mark is a word, image or combination of both that distinguishes your products or services from those of your competitors. It acts like a badge of origin to help the public identify the trade source of goods or services. A trade mark can also help consumers identify high quality over low quality products.
Trade marks and other forms of intellectual property
A trade mark is different from other forms of intellectual property such as patents and copyright.
a piece of work such as a book, song or film
What can be registered as a trade mark?
The most common signs registered as trade marks are words or logos associated with a trader's goods or services. However, other signs can also be registered as trade marks, including colours, shapes, sounds and smells.
Examples of some of these more unusual trade marks include:
Cadbury Limited has registered the colour purple as a trade mark in relation to chocolate.
The Coca-Cola Company has registered the shape of a coca-cola bottle as a trade mark in relation to beverages.
The song "Greensleeves" has been registered as a trade mark in relation to ice cream.
However, qualifying as a sign capable of registration as a trade mark is only the first step in the process.
Rules for registering a trade mark
There are a number of rules that must be adhered to before the Intellectual Property Office of New Zealand ("IPONZ") will register your trade mark, including:
Some words and symbols cannot be registered as trade marks. For example, certain flags and emblems, the word ANZAC, and words and emblems associated with the Rugby World Cup cannot be registered.
The trade mark must be distinctive and must not be descriptive. A trade mark will not be considered distinctive if other traders are likely in the ordinary course of their business and without improper motive to want to use the same or a similar mark in connection with their goods or services. For example, the word TREAT for dessert sauces was found to lack distinctiveness.
The trade mark must not be similar or identical to a registered trade mark in relation to the same or similar goods or services where the public are likely to be deceived or confused by the use of that trade mark.
Trade mark registration process
After receiving your trade mark application IPONZ will consider the factors above and then decide whether to accept your application for registration.
If IPONZ accepts your application it will then advertise the acceptance. Over the next three months any person may raise objections with IPONZ. If no objections are received IPONZ will then register the trade mark.
Registration lasts for 10 years and can be renewed by payment of the renewal fee.
Trade mark identification
Different symbols can be used to identify unregistered and registered trade marks.
A ™ symbol
indicates that a trader is using a sign as a trade mark but does not indicate whether the sign is registered. Once a trade mark is registered, the ® symbol may be legally used against the trade mark.
Enforcing your rights
Owners of registered trade marks can take action through the courts under the Trade Marks Act where another trader uses a similar or identical mark without consent. The courts can prevent that person from continuing to use that trade mark and award damages.
Owners of unregistered trade marks cannot enforce their rights using the procedure under the Trade Marks Act. However, in certain circumstances they may be able to bring a claim for passing off or breach of the Fair Trading Act.
If you are considering registering your trade mark, please contact Charlene Sell, an associate in our Commercial team who can assist with the preparation and filing of your trade mark application.
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