For many businesses, one of their most significant assets may be goodwill. Registering the trade marks you use can add value to your business by helping deter other businesses from trying to imitate your brand or benefit from its success. Parry Field Lawyers provide legal advice on a range of commercial matters including protecting your intellectual property.
Why should I register a trademark?
Registering a trade mark protects your investment in that mark and offers these additional benefits:
- You gain the exclusive right to use the trade mark throughout New Zealand to promote the goods and/or services that it covers.
- You can use the ® symbol with the trade mark to show others that it is a registered mark.
- Your mark is registered on the publicly searchable Intellectual Property Office of New Zealand (“IPONZ”) trade mark database. Other businesses intending to register the same or a similar trade mark can see that your mark is protected.
- You can sue for infringement if a business or person uses the same or a ‘confusingly similar’ mark on the same or similar goods/services.
- Once your mark is successfully registered, you are protected from others claiming you may be infringing their mark.
- A registered trade mark adds value to your business in the form of ‘goodwill’ that can increase substantially over time as the mark becomes established in the market.
- As your registered and protected property, you can sell or assign the trade mark to another person or business, or license its use to other parties
How do I register a trade mark?
New Zealand’s Trade Marks Act 2002 allows the owner of a trade mark to apply to the IPONZ to register the mark.
Parry Field Lawyers can assist with registering a trade mark online. You need to prepare a clear description of the trade mark. If your trade mark has a special shape, colour or font (for example, a business logo), then ensure you have a suitable image to accompany your application.
You also need a list of the goods and/or services you market, or intend to market, under the desired trade mark. Choosing the classes and description of goods and services in relation to which you register the trade mark is important. Since the protection you gain is tied to goods and services against which the trade mark is registered.
IPONZ charge $150.00 plus GST for each trade mark application in relation to each class of goods or services for which you apply to register the trade mark.
What happens after I apply?
After you apply to register the trade mark, IPONZ examine the application to confirm it complies with the Act. This usually takes around two weeks after the application is filed. If IPONZ raises any concerns with the application, you have 12 months to respond to those concerns, although you can ask to extend this deadline in some cases.
If IPONZ is satisfied that the trade mark appears to comply with the Act, it gives you notice of acceptance of the trade mark and then advertises the trade mark to allow other interested parties to raise any objections they have. Anyone can oppose registration of the trade mark by filing a notice of opposition with IPONZ. If opposition is filed, there is a process for IPONZ to hear the dispute and decide whether to allow registration of the trade mark.
If there is no opposition within 3 months after the trade mark application is advertised, and once 6 months have passed from the date you applied to register the trade mark. IPONZ will issue a certificate of registration for the trade mark. This lasts for 10 years, and can be renewed for further periods of 10 years.
Registration may not be as costly as you think. The filing fees are not excessive and legal fees for obtaining the registration may be less than you anticipate.