If you own a business, run a business, or you’re planning to set one up, then trade marks need to be at the top of your to do list.

Trade marks are an invaluable way to protect your brand and its distinguishable features from competitors or similar businesses in the market. However, how and what to file are often fraught with confusion – making it tough to know what you need to do to keep your business protected.

Below, we look at the trade mark process in New Zealand, why you need one, and what happens in the event of trade mark infringement.

What is a trade mark, in legal terms?

A trade mark is a badge of origin used to distinguish the goods or services of one business from those of another. Trade marks can take many forms, from words to logos, images, sounds, shapes, colours or even smells – provided it is sufficiently distinctive. Beyond these factors, businesses must adhere to additional guidelines to fully leverage their trade mark’s potential while remaining compliant. This diligence not only safeguards trade mark rights but also preserves valuable brand equity.

The purpose of a trade mark

A trade mark serves as a unique identifier, identifying goods or services as originating from a particular company and protecting its brand identity. A trade mark can assist to build trust and fosters lasting loyalty among business partners and clients.

When you register a trade mark, you gain the exclusive right to use that mark in connection with the goods or services for which it is registered. A trade mark provides proprietary rights to enable protection. Business or company names provide no such protection.

What can be registered as a trade mark?

To register a trade mark in New Zealand, it must meet a number of criteria including the following:

1. Distinctiveness – the mark must be capable of distinguishing the goods or services from those of others. That means that it must not be generic, a geographical indication or describe the goods which it names – e.g. APPLE can be registered as a name for computer programs.
2. Not confusing – the mark must not conflict or be ‘confusingly similar’ to any earlier trade marks, for the same or similar goods or services. What is confusingly similar depends on a wide range of factors, including the industry of the goods, the trade channels they are sold in and the target audience.

Why register a trade mark?

In New Zealand,   trade mark rights can either be registered or unregistered. A registered trade mark is stronger and easier to enforce. However, even if a trade mark is not registered, businesses may still have some protection under common law. However, these rights are harder to prove and enforce.

Having a registered trade mark provides the following advantages:

1. Exclusive rights are gained: registration grants you the exclusive right to use the mark for the specified goods or services in New Zealand.
2. Ensures legal certainty: it is far easier and cost efficient to enforce your rights and take legal action against infringement.
3. Becomes a valuable asset: a registered trade mark can become a valuable asset enhancing your brands value and appeal to investors or potential buyers.
4. It prevents another party from registering a trade mark that is the same or similar to your brand. If they achieve this, they are entitled to use that trade mark, potentially causing damage to the goodwill of your business.

The registration process

1. Ensure your trade mark is valid: ensure that your chosen mark is distinctive for your chosen goods or services. In New Zealand, there are certain other marks that cannot be registered as trade marks. For example, offensive words cannot be registered and marks incorporating Māori elements will be examined on a case-by-case basis.
2. Search the trade mark register: before applying, conduct relevant checks to ensure your mark is available to use and not confusingly similar to any other trade mark in relation to the same or similar  goods and services
3. File an application: applications are submitted to the Intellectual Property Office of New Zealand (IPONZ). How your trade mark is filed, as a word mark or logo or combination, who is the owner and  the exact  specification of  goods or services it covers, designated under one of 45 different classes, will determine what protection you are afforded. Advice from a specialist in this area is recommended. Once filed the mark cannot be changed. .
4. Examination and publication: IPONZ will examine your application for compliance with the Trade Marks Act 2002. If accepted, the application will be published for opposition by third parties.
5. Registration: if no oppositions are filed, or if oppositions are resolved in your favour, the mark will be registered.

Trade Mark infringement

Using a registered trade mark without the owner’s permission can constitute trade mark infringement. Remedies available to trade mark owners for trade mark infringements include injunctions, damages, and account of profits.

In New Zealand, securing your trade mark isn’t just about legal protection; it’s a strategic move that safeguards your reputation, fosters enduring trust with your target audience and sets you apart in a competitive marketplace.

If you’re considering registering a trade mark or need advice on protecting your brand, reach out to our team for tailored legal assistance.