A trade mark is a unique symbol which identifies and distinguishes a company’s products and/or services from other similar products and/or services offered by competitors. This weeks article is by QCL lawyer Tom Huang, Tom gives you a brief idea of how trade marks work in New Zealand.
Tom has a commitment to providing an exceptional professional and client-oriented service. Tom has the ability to create a warm and friendly atmosphere for clients. Tom is confident that his business background better enables him to provide a practical approach in solving clients’ problems. Tom is also working closely with the senior lawyers at QCL to grow the firm’s Chinese penetration and working with QCL owner Marcus Beveridge on some of the firm’s real estate deals and services. To download this article as a print and tablet friendly PDF click here. To find out more about Tom click here. To read more articles by Tom click here.
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A trade mark is a unique symbol which identifies and distinguishes a company’s products and/or services from other similar products and/or services offered by competitors.
What is a trade mark?
A trade mark essentially is referred to as a “brand” or “logo”. The most commonly recognised trade marks are a word mark or an image mark or a combination of both.
Word trade marks offer the broadest protection, as a word mark for plain text characters protects the words regardless of the way they are presented. Therefore, they are the most common types of trade marks applied for. A device mark usually refers to a combination of a word and image or words in a stylised form. A device mark for words protected as special characters or a logo mark provides protection for the mark as it is presented. In this case, registrations of a trade mark give rights to the mark as a whole. It does not give rights to any separate parts of the mark such as words or design elements independently. Other, less common, types of trade marks also can include colours, shapes, sounds, smells or any combination of these, which have to comply with all of the requirements of the Trade Marks Act 2002.
Things you need to be aware of in a trade mark application
· Classification of the business’ goods and services
Goods and services are divided into 45 classes under the international system of classification. You need to state the class or classes of the goods and/or services for which you want to use the trade mark.
An application to register a trade mark in one class costs NZ$150.00 excl. GST. Each additional class(es) will cost a further NZ$150.00 excl. GST per class. Since the fee is non-refundable, it is important to complete the research first, particularly:
a) Check existing trade marks to ensure your desired trade mark is not registered or is not confusingly similar to an existing trade mark. An IPONZ (Intellectual Property Office New Zealand) search costs NZ$40.00 excl. GST per class.
b) Review some reasons for trade mark rejection to reduce the chance of the application being rejected. IPONZ’s preliminary advice also costs NZ$40.00 excl. GST per class.
· Restrictions to registration of a trade mark
A trade mark must be distinctive of a single trader’s goods and services. A trade mark may not be able to be registered if it:
- Is not distinctive (is the same as, or 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 e.g. BEST, SUPER etc;
- Is a descriptive term, e.g. SWEET for ice cream;
- Is a geographical location associated with the goods or services, e,g, BLUFF for oysters;
- 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 of endorsement or licence by a particular person or organisation.
Once a trade mark is registered, the owner of the trade mark must maintain the registration. A trade mark registration can be renewed every 10 years and the fee for a renewal is NZ$350.00 per class excl. GST.
If you have a trade mark enquiry, please feel free to contact us.