What is a trade mark?

A trade mark is an intellectual property right in a recognisable word, image, logo or phrase which distinguishes your products or services from others on the market.

Examples of easily recognisable trade marks are the golden arches design of MacDonald’s logo, or the flowing red script for Coca-Cola.

Another example is the trade mark for Dove skincare. This trade mark protects both the business name “Dove” and the image of an outline of a dove.

Why register a trade mark?

Trade marks are important because customers will come to associate your trade mark with your business. As your business grows and expands, a trade mark will be a valuable way of distinguishing yourself from competing businesses that offer similar products. If other businesses use your trade mark, then they may derive the benefit of your hard work.

Registering your trade mark gives you the exclusive right to use that trade mark in New Zealand to promote your products and services. You may also sell or assign the trade mark to another business, or licence it for use by other parties.

How do you know if a trade mark has been registered?

Generally speaking, TM with a circle around it signifies an unregistered trade mark. R with a circle around it indicates that the trade mark is registered.

You can also search the Intellectual Property Office of New Zealand’s (IPONZ) website to check whether the word, slogan, logo or image you wish to use as a trade mark is already being used by another party.

How do I register a trade mark?

You can do this on the IPONZ website. It is $100 to register a trade mark and $200 to renew it every ten years.

Will I have any legal recourse if I don’t register a trade mark?

If a competitor uses your unregistered trade mark to advertise its own products or services, you may be able to bring a claim in passing off. This essentially means that the competitor has misrepresented its goods and services as coming from, or being connected to, your business.

While you may take legal action if your trade mark is unregistered, you will need to prove the reputation of your trade mark in the area where the other party used it, that your trade mark applies to the same services or products for which your competitor used it, that continued use will (or will likely) mislead customers and lead to a loss for your business.

On the other hand, if your trade mark is registered, you simply need to prove registration and you can pursue simpler legal remedies.

 

Leading law firms committed to helping clients cost-effectively will have a range of fixed-price Initial Consultations to suit most people’s needs in quickly learning what their options are.  At Rainey Collins we have an experienced team who can answer your questions and put you on the right track.

Author Sarah Jamieson