What is a trade mark?

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A trade mark is a unique identifier, often referred to as a brand or logo. Once a trade mark is registered with  IPONZ, the Intellectual Property Office of New Zealand, the ® symbol may be used with the trade mark.

Trade marks can include words, logos, colours, shapes, sounds, smells – or any combination of these.

Trade-mark

 

What are trade marks for?

A trade mark enables businesses to distinguish their products or services from similar products or services offered by competitors. The main purpose is to create a distinctive and preferably memorable brand that customers associate with quality products or services.

Satisfied customers will be more likely to buy the same brand again and refer the brand to others. A strong brand therefore helps a business both gain and retain its customers.

Why register a trade mark?

A carefully selected and managed trade mark can become a valuable business asset. As customers learn to value and trust a trade mark, they may be willing to pay more for a product or service bearing that mark.

This enables a business owning a quality trade mark to stand out in the market place and gain a competitive edge over its competitors. For some companies, an effective trade mark can become their most valuable asset.

How do I register a trade mark?

  • Prepare a clear description of your proposed trade mark and a digital image of it to include in your application. This can be a JPG, GIF or TIF image file.
  •  Search the IPONZ trade mark database for any existing marks your proposed trade mark could infringe upon. It’s important to do this thoroughly as the cost, per trade mark class, of processing the application is non-refundable. If you need assistance, you can request that IPONZ search the database for you, for a small fee.
  • Review IPONZ’s  reasons for trade mark rejection to make sure your proposed trade mark won’t break any clear rules. You don’t want the application to be a waste of money or time, so it’s worth checking the list. If you’re still unsure, you can request preliminary advice from IPONZ to make sure it meets the rules before you make your application.
  • Register for an igovt log on to access  TM & Design log in with IPONZ.
  • Go to the  Online Services tab of the IPONZ website and use your TM & Design log in to access the online application.

Goods and services trade mark classes

When you fill out the online application, you’ll need to include a list of goods and services specifications and classifications.

The specification refers to the types of goods or services you want your trade mark to apply to. The classification, meanwhile, refers to the class those goods or services apply to in International Classification of Goods and Services published by the World Intellectual Property Organization (WIPO).

A business that makes cameras and photographic processing equipment, for example, would choose Class 1 (for chemicals used in photography) and Class 9 (for photographic apparatus and instruments) from the  trade mark classification list.

Be aware, the selection is split into 45 classes, with the cost of processing your trade mark application based on the number of classes you choose for it to apply to. If you chose to propose in your application that your trade mark should apply across the board, the cost to you would be multiplied by 45.

That money is non-refundable regardless of the outcome, so make sure each class you choose is relevant before you complete the application.

What sort of marks can be registered?

Trade marks can take the following forms.

  • Word
  • Image
  • Combined
  • 3D
  • Animation
  • Colour
  • Sound
  • Smell

Registration of a trade mark gives rights to the mark as a whole. It does not give independent rights to any separate parts of the mark such as words or design elements. Before applying for a trade mark, consider the following:

  • A word mark for plain text characters protects the words regardless of the way they are presented.
  • A device mark for words protected in special characters or a logo provides protection for the mark as it is presented.
  • All applications to register trade marks are examined by IPONZ to ensure they comply with all requirements of the Trade Marks Act 2002.

Restrictions to registration of trade marks

A trade mark may not be able to be registered if it indicates the kind, quality, quantity, intended purpose or dollar value of the good/service in a way that is not unique or unusual or incorporated into a trade mark as one of its elements.

A trade mark may not be able to be registered if it:

  • Is the same as, similar to, or a translation of, another trade mark that is well known in New Zealand.
  • Is likely to mislead, confuse or is offensive.
  • Is a superlative – for example BEST, or SUPER.
  • Is a descriptive term – for example, SWEET for ice cream.
  • Is a geographical location associated with the good or service – BLUFF for oysters, for example.
  • Contains a representation, or an imitation of any representation, of Her Majesty or any member of the Royal family.
  • Contains a representation of a flag, armorial bearing, insignia, orders of chivalry or state emblem.
  • Suggests endorsement or licence by a particular person or organisation.

Trade marks must be distinctive

A trade mark must be distinctive of a single trader’s goods or services. This means that it must be unusual enough that consumers would identify it with only one trader. If a trade mark is not distinctive, it means that the public would not identify the trade mark as a brand or logo. For example, the term BUDGET SUPERMARKET for retail services in relation to food and household items is unlikely to identify one trader from any other in that trade channel. The term could be used in connection with many different traders and it would be unfair to grant a monopoly of such a term to any one trader.

Trade marks can’t be descriptive of a characteristic of the goods or services. Marks that simply describe the goods or services to which they relate are unlikely to be able to be registered.

For example the word apple can’t be registered as a trade mark for fruit. However, APPLE® is not descriptive of computers and therefore is distinctive in relation to computers.

Trade marks can’t be terms that are customary in the trade

Marks that are commonly used in relation to the goods or services for which the mark is being used may also not be distinctive. A colloquial or generic term that has been commonly used to describe a characteristic of the goods or services may not be able to be registered. For example, the term EXTRA SUPREME is commonly used to describe a pizza with many toppings, and therefore can’t be registered as a trade mark in relation to pizza.

Marks that are, or appear to be, derivative of a Maori sign

Where a trade mark is, or appears to be, a derivative of a Maori sign, the application will be forwarded to the Maori Trade Marks Advisory Committee. The Committee will advise IPONZ whether the mark is likely to be offensive to Maori.

Please note, these are common issues that may be raised in response to a trade mark application. It is not a complete list and does not constrain the judgement and discretion of the Commissioner of Trade Marks.

Each application will be considered on its own merits. For legal advice, we recommend you contact a  patent attorney or lawyer familiar with intellectual property law.

Find out more with What is a patent?, What is a design? and Copyright in New Zealand.

 
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