Mark Gavin explains why you want trade marks and how to make the most of them.

Trade marks often play a key role in a business’ marketing strategy for differentiating competitor products, developing brand identity, image and reputation.

In today’s increasingly competitive marketplace, the value of a trade mark to a business’ goodwill can be significant no matter how small the business.

Businesses can also be disadvantaged if they do not take early advantage of protecting their brand through a trade mark registration or if they develop a new brand which encroaches on existing traders’ rights. For such reasons, it is important for business owners and marketers alike to be “trade mark savvy” when engaging in any marketing strategy.

What is a trade mark?

Marketers often refer to “brand” or “brand names” interchangeably with “trade mark”, although particularly for larger companies a brand can be much more than a trade mark.

Trade marks can consist of a word, letter, symbol (or logo), number, colour, shape, or a combination of one or more of these elements. New Zealand legislation also allows for the registration of a sound, smell, or even a taste as a trade mark, the only caveat being that it must be capable of being represented graphically so that it is identifiable on the register. This is simple enough in the case of a word or device mark, however for a sound it may be presented in musical notation and it is even more difficult in the case of describing a smell.

The New Zealand Intellectual Property Office (IPONZ) can only register a trade mark that is capable of distinguishing the goods or services of one person from those of another. IPONZ cannot register trade marks which are not distinctive or that are descriptive of the goods or services in question. For example, the word “fizzy” is not registrable for soft drinks but would be for clothing.

Further, IPONZ will also reject an application for a trade mark which is identical or similar to an existing trade mark registration and in respect of similar or identical goods.

The basic elements of a good trade mark are that the mark should be inherently distinctive and easy to memorise and/or pronounce. Some well known trade marks such as Nike, the Nike “swoosh” device, and the slogan “Just Do It” or the words “Coca-Cola” easily fit these descriptions. The trade mark must also be appropriate to the product or image of the business. For example, the word “Puma” for sports wear conveys certain connotations of the strength and agility of a Puma cat, whereas the word “Lollipops” for sportswear would convey a whole different impression.

The main thing to keep in mind is to try to be as original and inventive as possible so as to avoid conflict and confusion with other existing brands and to establish a strong and successful brand. Although a creative graphical representation such as a company logo may be an acceptable method of trade mark registration, you shouldn’t have to rely on the graphical representation of the brand as being the only distinguishing feature.

Why register a trade mark?

Having a registered trade mark means that you have the exclusive right to use the trade mark in trade in the class of goods and services that it is registered in. Further, you do not have to prove that you have reputation or goodwill in the mark before you can protect it.

Trade mark registration also allows you to license the use of the trade mark. This can be important when you want to allow others to benefit from the goodwill associated in the mark but retain ownership such as in the case of a franchise business.

It also covers use of the mark throughout the whole of New Zealand, even if you are using it in one location. Therefore, trade mark owners have the right to bring trade mark infringement proceedings against anyone who uses the mark without their authority in New Zealand in respect of the same or similar goods or services.

For such reasons, registered trade marks are often considered to be part of a business’ most valuable assets, and in some cases the value of the brand alone may be a large sum. The cost of registering a trade mark is relatively low compared to the worth or goodwill of the brand generated from use of the mark.

How to protect your trade mark

It is important to register your trade mark at the earliest opportunity so that no one else can free-ride on it and so that money is not wasted on securing a trade mark which might not be available to register or use. As soon as a trade mark application is filed, then you may be able to assert rights in the mark from that date, although these rights will not solidify until the mark is actually accepted and published for registration, which can take some months.

It can prove to be very costly for a business to start producing and marketing a product under a new brand only to find out later down the track that another competitor is using an identical or similar mark in respect of similar goods, which may then lead to a trade mark infringement and/or Fair Trading Act claim being made.

Particularly for companies with multiple brands, it will be important to conduct an annual trade mark portfolio review to make sure all trade marks which are in use or proposed to be used have been registered or whether existing trade marks require renewal.

If your business wishes to incorporate trade marks as part of an overall marketing strategy, then it is recommended that you seek specialist advice from trade mark law experts in the national and/or international arena.