Protecting Your IP With A Trade Mark

Contents

What Is A Trade Mark?

Registering your business name and logo as a trade mark gives your business exclusive use of the trade mark for certain goods and services. Trade mark registration is a key way to protect your business’s brand, image and reputation in New Zealand. Without a registered trade mark, you risk competitors using a similar name or logo, which could not only confuse your customers but also potentially restrict your use of your own brand.

When Do I Need It?

The strength of your business often lies in the distinctiveness of your name and logo, making it crucial to secure them with a registered trade mark as soon as possible. Even if your business is in its infancy, it’s wise to consider trade mark registration early. Keep in mind that the registration process in New Zealand can take several months.

As your business grows, the importance of having a registered trade mark increases. The process in New Zealand typically takes around six months, so planning ahead is essential.

How Do I Use It?

In New Zealand, you can apply to register trade marks with the Intellectual Property Office of New Zealand (IPONZ). IPONZ will charge a fee per trade mark class, and the registration process usually takes around six months. While it’s possible to manage the application yourself, the process can be complex, so seeking assistance from a lawyer who specializes in trade marks is often beneficial.

Trade Mark Example

Nicola has opened a vintage clothing shop in Wellington. She has designed her own unique logo featuring the letter “V”, which has gained popularity on social media and increased her shop’s foot traffic. Nicola didn’t register her logo as a trade mark, and shortly after opening, another vintage shop appeared nearby with a similar “V” logo. The competitor registered the trade mark and has now issued a cease-and-desist to Nicola. She’s now faced with the tough choice of either incurring significant legal costs to challenge the demand or rebranding and losing the social media goodwill she’s built. Had Nicola considered trade mark registration earlier, she could have avoided this predicament.

What Are The Steps?

There are four main stages to trade mark registration in New Zealand:

Prepare – Begin by checking the availability of your trade mark using the IPONZ online search tool. This will help you identify any similar existing trade marks. Alternatively, you can engage an IP lawyer to conduct a comprehensive search and provide advice on the best approach for your application.
Apply – After confirming your trade mark’s availability and ensuring it has a strong chance of success, you’ll need to prepare and submit an application to IPONZ, specifying the correct classes of goods and services. An IP lawyer can assist with this process to ensure accuracy and compliance.
Examination – IPONZ will review your application to ensure it meets all legal requirements. Errors in classification or description can lead to objections, so thorough preparation is crucial to avoid additional costs and delays.
Registration – Following a successful examination, your trade mark will be published for opposition. If no objections are raised within the opposition period, your trade mark will be registered, granting you exclusive rights in New Zealand.

For more detailed information on trade marks, read our comprehensive article on the subject, which includes FAQs and insights into the Sprintlaw trade mark registration process.

Need Help With Registering A Trade Mark?

Trade mark registration can be intricate and overwhelming. Proper legal guidance is invaluable, as it ensures your application is correctly drafted and can prevent costly disputes down the line. At Sprintlaw, our team of experienced lawyers is ready to assist you with trade mark searches and registration. Contact one of our consultants for a no-obligation chat at 0800 002 184 to learn how we can support your trade mark registration and address any other legal needs your business may have.

Minna Boyle

Minna is the Head of People & Culture at Sprintlaw. After completing a law degree and working in a top-tier firm, Minna moved to NewLaw and now manages the people operations across Sprintlaw.