chapter 2

Trademark Registration

Trademark

Definition

any sign capable of
(i) being represented graphically; &
(ii) distinguishing the goods or services of one person from another.

—S. 5(1) Trademarks Act

In the competitive and constantly changing digital marketplace, a trademark is a very valuable asset. It differentiates your business and the quality of your products from those of your competitors. Your trademark carries your reputation with it, and reinforces long-term relationships with your buyers.These marks are unique identifiers and are also referred to as “logos” or “brands.”

It’s important to be aware of trademarks not only to protect your rights but also to ensure that you’re not infringing on the rights of others when creating one.

The Intellectual Property Office (IPO) is responsible for registering and enforcing your rights as a mark holder. They're a resource you can access to gather information, ask questions, check the registry of current marks and begin the registration process.

The Trade Marks Act is the federal legislation that broadly defines which marks can be protected by law, as well as outlining your rights and how to enforce them.

Trade–marks can include

words, logos, colours, shapes, sounds, smells or any combination of these —IPO

Before registering your mark formally with the IPO, check its registry to make sure your mark is unique. Your application for a trademark will not be successful if the mark already exists in New Zealand, or if there’s a mark similar enough to confuse consumers. Undergoing this step will increase the chances that your mark will be approved and ensure that it’s unique and distinguishable.

Existing Marks

Recommended Research

(i) Check for marks that have been registered through the IPO.
(ii) Check for unregistered marks that may also be in use in the country.

—Conduct these searches

There’s no legal requirement for you to register your trademark, but there are benefits for your brand if you do. Registering your mark gives you the exclusive right to use it in New Zealand. In the event that someone does use your mark, it’s easier for you to take legal action because the registration is enough proof that you own the mark.

An unregistered mark holder can only enforce their rights on the basis of “passing off” or via proceedings under the Fair Trading Act, but these avenues are difficult and expensive to prove. A trademark is an asset to your business that is worth protecting, and registering your mark is the best way to do that.

Registered Marks

(i) Property — can be sold
or licensed.

(ii) Give the holder exclusive rights.

(iii) Deters others from using it.

(iv) Proof of ownership.

 

Unregistered Marks

(i) Using your mark for extended
time can provide rights.

(ii) More difficult and expensive
to bring legal action.

Always remember that the law is fluid and subject to change. Although trademarks are an established area of the law, be sure to stay informed about the changes relevant to you and your business. The IPO is a good resource for keeping up to date and ensuring that your rights are maintained.

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3. Privacy — Anti Spam

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