Seeking legal advice for trade marks?
Most people are aware of the value to a business of a well-crafted brand or brand name. The most common form of protection for a brand or brand name is registration as a trade mark under the Trade Marks Act 2002.
What is a Trade Mark and how does it work?
A trade mark is a sign or symbol used to distinguish one person’s goods or services from others in the market place and will give an owner exclusive use of that mark for a specified range of goods or services.
Trade marks may include, amongst other things, brands, devices (logos), signatures, words, colours, sounds, shapes, smells or any combination of these, provided they can be represented graphically.
Whilst an unregistered trade mark may be used, and have a measure of protection under the Fair Trading Act or the common law right of passing-off, to protect the use of that mark against other users will require an owner to show a reputation in that trade mark has been established over a period of time. This will be difficult in the case of a new brand.
Registration under the Trade Marks Act 2002 is proof of ownership. It will provide greater protection against unauthorised use by another party of a similar mark for the same type of goods or services that is likely to cause confusion in the market place.
Whilst registered and unregistered trade marks may use ™ only registered marks can use ®.
Registration of the trade mark will provide exclusive use to the mark only in the specified class or classes of goods/services so it is essential to consider in detail the rights you wish to protect when filing an application for registration.
Trade marks which are descriptive, misleading, offensive or laudatory may not be able to be registered. A search of the trade marks register before making an application is advisable to avoid infringing against an existing trade mark.
An application for registration of the trade mark can be filed both in New Zealand with the Intellectual Property Office of New Zealand or with another country’s relevant IP Office. Protection of the mark will only be effective in countries where registration is granted.
There is no time limit to registration as long as the original application fee and renewal fees are paid and the mark is continued to be used by the owner.
A registered trade mark may be a valuable asset when selling a business.