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Top Tips for registering your brand as a trade mark

August 20, 2015

From what can be protected by trade mark registration, to why register a trade mark, Solicitor Sarah Rosanowski details the top tips for securing your brand name.

What is a trade mark?

A trade mark is a sign which indicates that goods or services come from a particular person or company. This is sometimes referred to as a ‘badge of origin’.

What can be protected by a trade mark registration?

A word, a phrase (such as a tagline), a logo or any combination of these can be registered as a trade mark in relation to goods or services. The rule is that anything that can be ‘represented graphically’ can be registered as a trade mark, provided that the sign is capable of indicating the source of the goods or services. Even smells, sounds, tastes and colours can potentially be registered as trade marks. However, you may need to have established a substantial reputation in one of these signs in order to gain trade mark protection for it.

For example, Christian Louboutin has a registered trade mark in the United States for his signature red shoe soles (which is enforceable provided the colour of the shoe itself is not red). Louboutin successfully sued Yves Saint Laurent for trade mark infringement for using red soles in a landmark US decision.

Why register a trade mark?

You may already have unregistered rights in a trade mark, such as the name or logo of your business, which you have acquired through use. But these rights can be difficult to enforce. Therefore, it is still important to consider applying for trade mark protection.

A trade mark registration means you have the exclusive right to use that mark anywhere in New Zealand in relation to the goods and/or services specified on the Trade Marks Register. You will be able to stop other traders from using your trade mark (in relation to the same or similar goods/services as your registration) anywhere in the country, and the registration is likely to deter others from trying to copy it to begin with.

A registered trade mark is also property that can be easily assigned or licensed to others and can be a very valuable asset for a business.

What is the difference between TM and ®?

You can use TM to indicate that you are using a sign as a trade mark, but it has not been registered yet (i.e. where you have unregistered rights).

You can only use ® once your trade mark is on the Trade Marks Register (i.e. you have a valid trade mark registration). Using ® without having a trade mark registration is actually an offence.

What makes a good trade mark?

The best kinds of trademarks are highly distinctive. These can be invented words (e.g. DESIGUAL®) or known words that are unpredictable in relation to the product (e.g. BUTTER for nail polish). Distinctive marks are easier to register because they distinguish you from other traders in your field, and are more likely to stick in customers’ minds. On the other hand, descriptive marks that describe the goods or services, or characteristics of the goods or services (e.g SLEEVELESS for a clothing item) and laudatory words (such as SUPER and BEST) are unlikely to be registrable.

Surnames and geographical names can also be difficult to register. That said, TRELISE COOPER® is a valid trade mark registration as is KATE SYLVESTER®. Registering a person’s name as a trade mark may require a substantial amount of evidence of use in the market.

What is covered by trade mark protection?

Trade marks can only be registered in relation to particular goods and/or services. The classes of products or services you intend to use (or are already using) your trade mark in relation to must be specified in your application. So if your trade mark is registered for clothing, footwear and headgear then you will not be able to prevent someone else using the same trade mark in relation to ice cream, for instance.

How long does it take to register a trade mark?

After filing a trade mark application, 6 months is the minimum time it can take for your trade mark to be entered onto the Trade Marks Register. This process can take longer if the Trade Marks Office raises an objection to your application, or if another party opposes your application.

Is a trade mark registration valid everywhere?

Trade mark rights are territorial. Therefore, if you have a New Zealand trade mark registration this will be valid in New Zealand only. That said, it is possible to apply for and obtain protection for your marks overseas. You can file one application for a trade mark in many other countries simultaneously through the Madrid system for the international protection of trade marks.

How long does a Trade Mark Registration last for?

Once registered, trade mark protection lasts for 10 years before it needs to be renewed. As long as it is always renewed on time, a trade mark registration can last for an indefinite period of time. This makes it a unique and valuable form of intellectual property.

Case study – Nora Swann v Arabella Pte. Ltd [2014] NZIPOTM 43

Nora Swann, a New Zealand fashion stylist, recently came to us for assistance with her trade mark. Nora won a magazine competition titled ‘Who wants to be a fashion stylist?’ in 2011 and has built up her fashion consultancy business under the brand KILA’S STYLE® since that time. Nora was inspired to come up with the inventive name for her business by joining the first two letters of each of her daughters’ names, Kirin and Laurel, to form ‘Kila’s’ (pronounced key-lahs). She then combined this with ‘Style’ to link it to the type of services she provides.

After some time building up her reputation in Auckland, Wellington and Melbourne, Nora decided to protect the rights in her brand name and applied to register KILA’S STYLE® as a trade mark for ‘consultancy services relating to personal appearance (fashion and clothing)’.

Before the trade mark application was entered onto the Trade Marks Register, however, it was opposed by the Singapore-based company, Arabella Pte. Ltd. Arabella is the owner of New Zealand Trade Mark Registration No. 736359 for KILLAH® (the word) in relation to ‘clothing, footwear and headgear’ and No. 853630 for KillaH BaBe® (the word combined with a logo) for a number of different goods.

Arabella opposed Nora’s application to register KILA’S STYLE® as a trade mark on a number of grounds, all of which ultimately failed after a hearing before the Intellectual Property Office of New Zealand.

The opposition by Arabella was therefore dismissed and the Assistant Commissioner of Trade Marks ordered that Application No. 971713 for KILA’S STYLE® must be added to the Trade Marks Register.

James & Wells were very pleased to assist and represent Nora in her efforts to protect and register her KILA’S STYLE® brand as a trade mark. Nora says “I am stoked that we won our case against Arabella. Thank you so much for your help and expertise in getting a successful result. I've got a few exciting projects planned for 2015 so I can now confidently move into the new year promoting my business knowing that my brand is now legally protected.”

James & Wells are glad to have helped Nora protect her intellectual property rights and add value to her business as it continues to grow.

Sarah Rosanowski, Solicitor

Image courtesy of Stuart Miles at FreeDigitalPhotos.net

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