Protecting Your Business With Trade Marks

Trade marks are a great way to protect the intellectual property in your business. Once registered, a trade mark gives you the exclusive right to use that mark throughout New Zealand. That gives you confidence to invest in your brand for the long-term.

What is a Trade Mark?

When people think of trade marks, they commonly think of a business name. However, a trade mark can be words, an image or logo, shapes, animations, colours and even sounds and smells. Trade marks can be registered in respect of any mark used in your business, provided that you use the trade mark (or intend to do so).

A common misconception about trade marks is that unregistered trade marks may be represented by the ™ symbol, while only registered trade mark are permitted to use the ® symbol. The most common are words or logos being the business name or names of specific goods and services. Generally speaking, a word trade mark is preferable over an image trade mark given that it offers wider protection. However, it is common to register both at the same time.

Trade Mark Requirements and Specifications

There are several important requirements that a trade mark must meet in order for it to achieve registration on the trade marks register. The key requirements are that it must not be: descriptive or superlative; misleading or confusing and must not be too similar to another registered trade mark. For example, a business selling apples could not register ‘Fruit’ or ‘Super Amazing Fruit’ because these are descriptive and superlative respectively. On the other hand, there has previously been a successful application for the word ‘Fruit’ in relation to real estate.

All trade marks have a specification, that is, a description of the goods and services in which the trade mark is registered in respect of. Specifications are separated into different classes of goods and services and it is common to register in respect of more than one class (depending on how the trade mark is intended to be used). The specification should be as wide as possible, but only in respect of those things which the trade mark will actually be registered for. It is more difficult to obtain a broadly-worded specification and it is common to drop a class from the specification in order to achieve registration when there is a conflicting trade mark already registered.

Preparing the trade mark’s specification can be tricky and technical, and it is recommended that a lawyer prepares this for you.

Registration Process

The registration process for a trade mark is as follows:

1. Submit the trade mark application with the Intellectual Property Office (IPONZ).

2. IPONZ will examine the application and give you notice of either acceptance or refusal within 15 working days.

3. If the application was accepted by IPONZ, the trade mark will be publicly advertised in the next edition of ‘The Journal’ publication, and a person will have three months from the advertisement date to lodge an opposition to registration of the Trade Mark.

4. If no objections to the application are received, the trade mark will proceed to becoming registered at the prescribed date.

Search and Preliminary Advice

IPONZ offers a useful search and preliminary advice service. By submitting an application online, IPONZ will undertake a search of the Trade Marks register for any conflict and will also give advice as to whether your trade mark is unique enough to your industry to obtain registration.

Benefits of a Registered Trade Mark

Some of the benefits of having your logo and business name as trade marks are:

  • Only you are allowed to use your business name and/or logo in New Zealand
  • Protects your business reputation and goodwill
  • Makes your product or service easily identified
  • Prevents competitors using yours or similar logos or business names
  • Helps grow your brand, both keeping and increasing customers
  • Stops consumer confusion between yours and other similar products or services
  • You can sell or license your trade marks, making them a valuable business asset
  • Gives you a marketing edge, something different from your competitors
  • Protects all of the time and money you have spent or will spend promoting your business name/logo

Talk to us

If you have any queries in respect of trade marks please contact Clare North.

Why Every Business Needs a Lawyer

Most businesses can benefit from consulting a commercial lawyer from the outset. With that in mind, we have put together a brief list of the benefits a commercial lawyer can bring to your business.

Deciding on a Legal Structure

From our experience, it is very important to get advice from professionals when selecting the best legal structure to suit your business and particular circumstances.

The business structure will determine what liabilities are faced, how your business is taxed, how any profits are divided, how you can sell your business, and at what price.

There are three basic structures commonly used by businesses in New Zealand:

  1. Sole Proprietor/Sole Trader: where only one person is the owner of the business and trades in his or her own right.
  2. Partnership: where two or more people own the business and share the profits and losses of the business.  
  3. Company: a legal entity separate from its directors, which run the company, and its shareholders, which own the company.

Contract preparation and review

It is common knowledge that contracts play a significant part in any business, irrespective of size. Contracts are required for a range of reasons, including for sales purposes, for employment purposes and for commercial lease purposes.

A lawyer can help you with preparing and reviewing contracts, with the aim of protecting you and your business as well as minimize the risk of potential legal disputes.

Trade Marks and Intellectual Property

Once your business is established, a lawyer can also help you to protect and make the most of your brand. A lawyer can advise you on whether using your proposed trade mark is likely to infringe any registered or unregistered rights for the same or similar marks. A lawyer can also advise you on whether an application to register your mark is likely to be successful. This will save you time and money in the long run.

Assistance with Disputes

Disputes can be fraught and emotional times, causing stress and anxiety. 

If your business has the misfortune of becoming embroiled in a dispute, for instance where there is a breach of contract, a lawyer can assist with a cost-effective and timely resolution.

A good lawyer helps keep you out of court and aims to resolve your issues as quickly and effectively as possible. While there are times when an aggressive approach is required, you are more likely to get the results you require from a reasoned and consultative approach, allowing you to get on with your business, and your life.

Succession Planning and Exit Strategy

An exit strategy is a plan for wrapping up your involvement in your business. 

A lawyer can assist you with developing an exit strategy for your business to suit your personal circumstances. It’s never too soon to start on your succession plan, or exit strategy.

Talk to us

Contact our Commercial Team today to discuss how we can assist you.