Frequently Asked Questions

Q. What is a trade mark?

A. A trade mark is anything that distinguishes your goods or services from others.  The most common type of trade marks are words or logos, but even shapes, colours and sounds can be a registered as a trade mark, if consumers would recognise them as referring to your goods or services.

A registered trade mark will grant the owner the exclusive right to use the mark throughout the country of registration.  The owner of a mark that is not registered may be able to establish some rights under consumer protection legislation.

Q. How can I register a trade mark?

A. An application for registration of a trademark must be filed in each country where you want to own your mark.

A step by step guide of the filing process in New Zealand can be found here. In New Zealand, there’s no requirement to have an agent file your application for you.   But, while DIY is cheaper in the short term, you don’t know what you don’t know, so there’s no way to know if you’ve overly limited your rights until you try and enforce them (or are sued).  See Q. Can I file the application myself

If you would like to register your mark overseas, in most countries you’ll need a local agent and/or you could consider the Madrid Application system – more information can be found here.

Q. What can be registered as a trade mark?

A. A trade mark is anything that distinguishes your goods or services from others.  The most common type of trade marks are words or logos, but even shapes, colours and sounds can be registered as a trade mark, if consumers recognise them as referring to your goods or services.

To be registrable though there two main requirements:

(a) the mark can’t simply describe your goods or services, or be a mark that others might want to use without improper motive e.g. the word “Apple” can act as a trade mark for computers, but not for apples; and

(b) the mark can’t be confusingly similar to an earlier mark on the relevant Trade Marks Register e.g. you couldn’t register the mark “Apple” for computers, but you may be able to register the mark for different goods such as jewellery.

Q. When can I use the symbols ™ and ®?

A. The ® symbol can only be used in relation to a mark that has been registered with the relevant IP office.

The ™ symbol can be used at any time to show that you consider a mark to be your trade mark.  No registration is required, but your rights may not actually be enforceable.

Another symbol you may see is the © symbol – this indicates that the owner considers they own copyright in the work. Like the ™ symbol however, their rights may or may not actually be enforceable. In New Zealand, you do not need to formally register for copyright protection, as it is automatically granted when the piece of work was created.

Q. Are trade marks limited to words or logos?

A. A trade mark is anything that distinguishes your goods or services from others.  The most common type of trade marks are words or logos, but even shapes, colours and sounds can be registered as a trade mark, if consumers recognise them as referring to your goods or services.

Q. Is a registered trade mark more valuable than unregistered?

A. A registered trade mark provides you with greater certainty around ownership as a registration gives you the sole right to use the mark throughout the country of registration based on the type of mark you file, and the goods and services you include in the application. A trade mark registration is also an asset like other assets in you business, that can be licensed or sold to others.

In contrast, an unregistered trade mark will rely on consumer protection legislation for protection – in order to claim any rights you will have to establish a reputation in the mark as well as likely consumer confusion.

Q. Why register a trademark?

A. Registration of a trade mark gives you the exclusive right to use the mark in relation to the goods or services in your registration, throughout the country where you have registered the mark.

Without a registration, in most countries you’ll need to rely on consumer protection legislation such as the Fair Trading Act in New Zealand and the common law tort of passing off.

With the Fair Trading Act and passing off you’ll have to establish your rights in the mark before you can bring a successful claim of infringement.  With a trade mark registration you’ll simply have to show that someone is using the same or similar mark to your own re the same or similar goods or services.  Your registration will also prevent someone else registering the same or similar mark – without a registration someone’s else’s registered mark could lead to limitations to your rights in the mark

Q. Can my company name be a trade mark?

A. Incorporation of a company simply means creation of a new legal entity through which you can do business.   The company name will be used to identify that legal entity, and can be a useful marketing tool as it must appear on all written communications sent by the company, and every document that evidences or creates a legal obligation of the company.

It will not, however, prevent the Registrar of Companies from registering a similar name to your own.  For example, even if you register the name “Trade Mark Limited”, someone else could register “Trade Mark (2020) Limited” with the Registrar of Companies.

Also, even if you are able to register a name with the Registrar of Companies, this does not mean that use of that name would avoid infringement of someone else’s trade mark.

Incorporating a company may therefore be recommended to you as the best way of running your business, but to claim exclusive rights in your name a trade mark registration is what is needed.

Q: How much does it cost to register a trade mark?

A. To file an application for registration of your trade mark in New Zealand with IPONZ, the government fees start at $150 + GST.  If the mark is registered without any objection there will be no further fees for ten years (at which time you can renew the registration).

Filing the application doesn’t guarantee a registration though, as an IPONZ Examiner will review your application to make sure its distinctive, not confusingly similar to earlier marks on the register, and meets other filing requirements.

The final cost of filing / obtaining a registration will depend on:

(a) how many “classes” of goods / services you claim – as each class has an IPONZ fee of $150 + GST; and

(b) whether or not you ask a Trade Mark attorney to help – my charges start at $600 + GST if you want to do a clearance search first to check the mark is a strong mark that you can defend, and that no-one else can use, then from $300 + GST to prepare a filing strategy and then draft and file the application; and/or

(c) whether you also want to protect your mark overseas – trade mark registrations only grant you the exclusive right to use the mark in the country of registration.

Q: What class of goods / services should I include in my application?

A. The scope of your rights in a registered trade mark will depend on how you describe your goods and services, as well as choosing the right class.  For example, if you own a beauty salon you should include class 44 in your application as a minimum, but you should also consider other related classes such as class 3 (which includes beauty products) and class 35 (which would protect your trade mark in relation to an online store).

Q. Can I register my trade mark myself?

A. In New Zealand, there’s no requirement to have an agent file your application for you – you may require a local agent to file on your behalf in other countries. The benefit of filing directly yourself is that the costs are limited to the government fees (see Q. How much does it cost to register a trade mark).

The problem with DIY though is that you don’t know what you don’t know, so there’s no way to know if you’ve overly limited your rights until you try and enforce them (or are sued).

The benefits of using a specialist trade mark lawyer to file for you include:

  1. The ability for your lawyer to check first whether the mark is eligible to use and register, by undertaking various clearance searches on your behalf.
  2. The provision of advice as to the best trade mark to file for optimum rights e.g. just the words in your trade mark, or just the logo, or a combination of both. The scope of your registration will be limited to the mark you include in your application.
  3. Guidance as to what classes and which goods / services you should claim in your application – you’ll need to think about similar goods / services not just identical ones

Q. How can I protect my design?

A. If you’ve come up with a great new two-dimensional pattern, or two-dimensional shape then you have a number of options for ensuring you can retain rights in your idea.  Three options are set out below.

1. Copyright

Copyright exists automatically in certain types of “work” as defined under the Copyright Act.  This includes sketches, photographs, moulds and prototypes.  In New Zealand there is no system of registration.  There’s also no requirement to put people on notice that copyright exists but if you do mark your goods (e.g. with the © symbol, your name and the year) then you’ll be able to claim damages as well as an account for profits in the event that someone infringes your rights.

2. Registered Design

In New Zealand, its possible to register a 2D pattern or 3D shape as a design if its not simply dictated by function, and you haven’t already put it out on the market, or published images of it online.  A registered design grants you the exclusive right to use the design in the country of registration.  In New Zealand the government fees for filing the application are $100 plus GST.

3. Trade Mark

If your 2D pattern or 3D shape becomes recognised as identifying your goods or services (e.g. Louis Vuitton’s famous LV pattern, or the shape of the old glass Coca Cola bottles) then you may be able to claim rights in it as your trade mark.  Its best to register your trade mark (see the Q: Why do I need to register my trade mark?), but it can be harder to get a registration for this less common type of trade mark until you can show some evidence that you’ve established a reputation.

Q. What can I do to protect my intellectual property on a limited budget?

A. Often your most important IP will be your trade mark – a name or logo which identifies your goods or services.  Before you launch a new brand check Google and the relevant country’s trade mark register (in New Zealand its the IPONZ Trade Marks Register).  If you do have the budget then its best to ask a trade mark specialist to help as there are tricks to getting the best out of a clearance search.

Its also best to register a trade mark, but if you don’t have the funds (see Q. How much does it cost to register a trade mark) then it costs nothing to use the TM symbol next to your mark to put people on notice that you consider something to be your trade mark.  You can’t use the ® symbol unless the mark is registered.

Its also worth putting people on notice of any copyright you may have (by using the © symbol, your name and the year).   You can also use the free Creative Commons licensing system to establish how other people can use your works.  In New Zealand these can be found here: https://www.tohatoha.org.nz/

Do have a chat with a patent attorney too to see whether there is any potential for a patent in your ideas, as once you use or publish your idea on the internet you may not be able to get a patent.

Q. Can I protect my trade mark outside my direct market / industry?

A. If you don’t have a trade mark registration in New Zealand, your rights will be limited to the Fair Trading Act (“FTA”), common law tort of passing off, and potentially the Copyright Act.

Under the FTA and passing off you’ll only have rights if you can show that you’ve got a reputation in the mark so its unlikely that you’ll be able to show that you’ve got any rights in relation to goods or services that are unrelated to yours.  You may be able to show some spillover reputation (e.g. if you sell shoes you could claim reputation in relation to goods commonly sold together such as clothing) but it would be difficult to claim rights in an unrelated market (e.g. if you sell shoes it would be difficult to claim any rights in relation to computer software).

If you have a trade mark registration, similar principles will apply re spillover reputation.  In addition the registration will block any applications filed for the same or similar goods or services in the same Nice class or conflicting classes (check out the Conflicting Class Table in section 6.2 of IPONZ Practice Guidelines No.10 on Relative Grounds – https://www.iponz.govt.nz/about-ip/trade-marks/practice-guidelines/).

Q. Can I stop others from using my phrase / slogan?

A. It is possible to claim copyright in a phrase or slogan if you can show that it is your own original creation, and you used sufficient labour, skill and judgment to create it.

If you want to claim exclusive rights in a phrase or slogan, the best protection would be via a trade mark registration.  The mark will have to be distinctive though i.e. not just consisting of normal language that others would want to use for their goods or services, or one that consumers would simply see as advertising hype (see section 6.5 of IPONZ Practice Guidelines No.5 on Absolute Grounds – https://www.iponz.govt.nz/about-ip/trade-marks/practice-guidelines/).

In either case, make sure you put people on notice about your rights in the phrase or slogan – © for copyright, ® for a registered trade mark and/or ™ for a registered or unregistered trade mark.

Q. What should I do when I receive a "Cease & Desist" letter?

A. Cease and Desist letter is sent when someone feels you are using something belonging to them and they want you to stop using it. It will say what they think you are doing wrong, what your response needs to be and what they will do if you don’t follow their instructions.

If you realise you have been using someone’s trade mark or copyright work without permission, stop using it immediately and apologise.  If you believe you that their claim is without merit, it’s best to engage the services of an IP lawyer. They will ask for the other side to state their case and prove that the copyrighted works exist. From here your lawyer will investigate the issue and make a recommendation as to your continued use or not of the work in question.

Q. What is the difference between a trade mark and a patent?

A. It is a way of protecting your brand and distinguishing your business against others. It is a tangible asset that your business will own, adds value to your business and gives legal protection to deter others from using or imitating it without your permission. Once registered, trade mark protection is given for 10 years and

A patent is the right to make, sell or use a process or product you have invented. Once registered, it gives you the exclusive rights to your invention for up to 20 years. To be approved, it must be useful, unique and involve an inventive process within it. Once a patent is granted, it will be published so others can learn from it, but they cannot use your patent for their benefit until your commercial rights have expired.