Distinctive brands and logos are beacons for business success
Trade Marks
Brands and logos are proven to be valuable IP assets for businesses. A trade mark can establish and enhance business reputation, and provide a sign of quality and trust. When trade marks become easily recognisable and associated with a business, they add value and build customer loyalty.
Trade marks serve as beacons for attracting business, and can take a wide variety of creative forms, commonly including distinctive words, letters, devices, slogans, symbols, pictures, and logos. Further, shapes, sounds or smells can now be considered registrable if they meet certain criteria. The options are endless.
Trade mark rights exist by use and by registration. It is possible to obtain protection of your trade mark rights by using or establishing a reputation in the trade mark by applying your brand to goods and services. However, establishing unregistered trade mark rights can take years of use, and unfortunately may be limited to the geographical region the goods or services are marketed. For example, a café will establish a reputation in the immediate city or suburb, but may not cover a region or nationally.
Registered Trade Marks
Registered trade marks provide stronger IP rights than unregistered trade mark rights, and can offer the following advantages:
- Registration makes it easier to prove ownership of a trade mark.
- Registration confers an intangible property right that can be sold or licensed.
- Rights accrue on filing an application for registration, even when the mark is not initially being used or marketed.
- Registration secures an exclusive right in the trade mark that can be relied on to stop the same or similar trade mark being used on the same or similar goods or services.
- Registration can provide a right to sue for infringement without the need to prove a reputation exists in the trade mark.
- The exclusive right to a trade mark can extend to an entire territory or country, even if the trade mark is only used or marketed in one region.
- Searchable applications/registrations provide notice to competitors of a claim to ownership in the mark. Trade marks offer a register warning of a claim to ownership that can deter other traders from choosing the same or similar trade mark.
Choosing a Trade Mark
Not all trade marks or brand names are registrable. Trade marks commonly used in an industry, or which are descriptive of the products or services, are often rejected during the registration process.
This risk of failure to register adds to the difficulty of choosing a trade mark. However, selecting a suitable trade mark before committing resources on packaging and marketing is recommended. Successfully avoiding conflict with competitors can be achieved by following a few guidelines.
The first step is to select a trade mark with the potential to attract consumers and distinguish your product or services from your competitors. Avoid brands that describe a character or quality of the product, such as CHILLY for ice packs or SPARKLE for aerated waters. These types of trade marks are not registrable, and other businesses expect to freely use words describing their products.
Trade marks such as XERO® for accounting software, FONTERRA® for dairy products, ZESPRI® for kiwifruit make excellent brands as they are distinctive and unique. Words having a dictionary meaning but don’t refer to an aspect of the product or service can also make great brands. For example, CAT for clothing, DOVE® for soap, and TIGER for mountain bikes, ice packs or aerated waters.
Words that indirectly refer to the product can provide an effective brand such as GREENFINGERS for garden gloves or SENTRY for a building alarm system.
Devising a creative brand to distinguish your valued product or business enterprise may offer that extra X factor that boosts your business to achieve quick recognition and a competitive edge.
We are IP experts at managing trade mark conflicts, and can assist parties with IP strategies for overcoming notifications of provisional refusal and trade mark objections, and other proceedings with international registrations designating New Zealand.
We can be contacted to explain the process in more detail to you directly, and provide an IP audit or IP strategy to resolve any problems with your local or international trade mark registrations.