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Trade Marks - if you don't use them you may lose them

September 20, 2017

A trade mark may be part of a business name, or a trader may have one or more marks that they use to identify their products or services with them. There’s no legal requirement to register a trade mark, but if it’s of any real importance to a trader, it makes sense to do so (if it’s registrable).

Once registered, a trader has to use the mark – otherwise, others (especially competitors) can apply to have the registration of the mark revoked.

The risk is where a New Zealand registered trade mark isn’t put to genuine use in the course of trade in New Zealand over a 3 year period in relation to the goods or services in respect of which it’s registered. Trade mark cases arise on this issue reasonably regularly, so in any given case, there’s a potential risk that someone like a competitor may apply to have a trade mark registration revoked.

Genuine use in the course of trade in New Zealand doesn’t have to be extensive but it’s got to be of the mark as it was registered (very minor variations may not be fatal) and it has to be in relation to the goods or services for which it’s registered. If it’s used for some of the goods or services but not all, it may be vulnerable to the extent of those goods or services.

We live in a world where morals are often low when it comes to hijacking other’s intellectual property, and where the digital world offers many opportunities for pirates. Just registering and continuing to use a mark won’t provide all the answers, but it’s a good start.

Traders should consider taking steps to protect their IP as best they can, including by registering brands, marks, etc where registration would be an option.

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