We can spend an age designing and choosing the names, colours, symbols and other marks of our businesses. After all that thought, planning and creativity it should follow that the final step we take is to do whatever is needed to protect those marks. One such step is to register your trade mark, and its unexpectedly easy.
It is possible to register as a trademark any ‘sign’ that:
1. Can be represented graphically; and
2. Is capable of distinguishing goods or services provided by your business from those provided by others.
A ‘sign’ includes a word, phrase, number, symbol, logo, colour, label, shape (or even a sound or smell).
Registering your trademark gives a number of benefits, including the exclusive right to use the mark throughout New Zealand in relation to the goods and / or services covered by the registration. A registered trademark offers legal protection to deter your competition from using the same or similar mark or imitating your brand.
When it comes to trade marks you should consider two scenarios: ensuring someone else cannot prevent you from using your chosen mark, and protecting yourself from someone imitating your brand. These are two distinct concerns which are addressed by registering your trade mark.
If someone else has registered a trademark in relation to your good or service they can prevent you from using a similar mark (even if you were unaware of their brand). Before you go to work on building the reputation and brand of your business it is worthwhile to perform a search of the trade mark register to be sure your chosen mark does not infringe a pre-existing registered trade mark.
Once you have confirmed your chosen mark is available the sooner you register the better as in the early years of a growing a business there is little to prevent someone from registering the mark you decided on.
In New Zealand the law of ‘passing off’ under the Fair Trading Act 1986 offers some protection to unregistered trademarks however an unregistered mark holder faces hurdles that a registered mark holder does not. To enforce rights in an unregistered mark you must first prove your rights based on reputation, while a registered mark provides instant evidence of a valid right. A successful claim requires the trade mark to have been used long enough to become a well-recognised brand and the general rule is that 2 years of consistent, nationwide use is required show the necessary reputation.
You can obtain a registered trademark by applying to the Intellectual Property Office for registration. The Intellectual Property Office website (www.ipol.co.nz) is user-friendly with tips and guides to help with registration. While you can complete registration yourself, we do recommend seeking legal advice beforehand, to assist with the process and to provide advice with related matters such as who or which entity should own the mark.
Turning your mind to trade mark registration at the outset of the creation of your business will pay in dividends. Registering your trade mark early means you can rest-easy that the brand you dedicate your time to developing will be protected both from the risk that someone could prevent you from using your chosen marks and from other’s seeking to cash-in on your brand. Registration is easy and relatively inexpensive (currently a fee of $150 plus GST applies per class), especially when compared with the time and cost involved in trying to enforce rights in an unregistered mark or starting from scratch to develop a new brand.
Stella Kasoulides Paulson is a Commercial Solicitor at Steindle Williams Legal