The Intellectual Property Office of New Zealand (IPONZ) encourages first time applicants to make an initial application for a ‘search and preliminary advice report’ (S&PA) before making an application to register their trade mark. This article seeks to give some clarification about what an S&PA report is and in which circumstances you may or may not want to make such an application.
An S&PA report consists of two parts and will give you an assessment within five working days as to whether your proposed trade mark complies with the requirements of the Trade Marks Act 2002. More specifically;
1. A search report will find whether anyone else currently holds a trade mark the same as or similar to your proposed trade mark.
2. A preliminary advice report will find whether your proposed trade mark renders your business clearly distinguishable within your industry.
Individually, each service costs $40 excluding GST, or $80 excluding GST for both services. While the services might be useful, applicants should be aware that applying for the reports is not compulsory. In fact, conducting your own search and ensuring your trade mark is distinguishable may not be as difficult as it sounds, and could save you money.
Conducting your own Search
There are four different searches you should complete to check the availability of your trade mark:
1. IPONZ Trade Mark Register
This register is the best place to begin your examination, offering a thorough search of already registered trade marks in New Zealand. You can access this database here.
2. ONE Check
As well as showing you already registered trademarks, ONE Check will also show you the availability of company names and domains. You can access this database here.
3. International Trade Mark Register
Searching this database will allow you to see if anyone has already applied for your trade mark in New Zealand, but it hasn’t yet been added to the New Zealand register. You can access this database here.
4. General Web Search
Lastly, we suggest you use a search engine, such as Google, to search for your proposed trade mark. This will show you any businesses that may already operate under your name. This search is not absolutely necessary, in that businesses with a name or logo that is not trademarked will not prohibit your application, but it may be worthwhile to assess who else could be considering registering a similar trade mark in the future.
If after conducting the above searches you are not able to find an existing trade mark at all similar to yours, it is unlikely you need to procced with the $40 search report. However, if any of the database searches return a similar existing trade mark, we suggest applying for a search report before proceeding. The $40 cost could save you the larger cost of a failed application.
As a general pointer, trade marks that attempt to register a compound word that includes an already trademarked word (registered in the same or similar specification category) are less likely to succeed. For example in a recent High Court case, the court held that the trade mark ‘Shacman’ was likely to deceive or be confused with the existing trade mark ‘Man’. Both trade marks were registered in class 12 (commercial vehicles).
Self-Assessing the Distinguishability of your Trade Mark
The Trade Marks Act requires each trade mark to have a distinctive character. For example, attempting to register the name ‘Budget Supermarket’ for a food and household goods retailer is unlikely to be seen as distinguishable as it could describe many traders in their nature of business. Similarly, the name ‘Blueberry’ as a trademark for fruit would not be seen as distinguishable, because marks that simply describe the good or service often cannot distinguish that good or service of one trader from another. Using the name ‘Blueberry’ as a trade mark for an architecture firm, however, would be distinctive.
If you are certain your trade mark is distinguishable, it is unlikely you need to proceed with the $40 preliminary advice report. However as with the search report, if you have any doubts regarding your trade mark’s distinctive character, it may be worth the $40 cost to save you the larger cost of a failed application.
Before registering, it also pays to ensure your trade mark is not on the list of protected words and is not likely to offend Māori or another significant section of the community. You can read our article on ensuring your trade mark does not breach this ‘offensiveness’ standard here.
For a more general overview of registering a trade mark, please see our original article here.