Trade Marks
Trade marks and mātauranga Māori
In Aotearoa-New Zealand, all trade marks are registered through IPONZ.
Positive protection (getting a trade mark registration)
Trade marks can be used to protect distinctive signs or symbols associated with Māori culture provided the mark is used in trade as a brand or logo. In addition, these trade marks must be distinctive. This means they have to distinguish one particular set of goods or services from similar goods or services provided by other people.
Certification and collective trade marks can be used to let consumers know which products are authentic indigenous products. The toi iho™ Māori made™ mark is an example of a trade mark created to protect products created by Māori artists (see case study opposite).
Defensive protection (stopping a trade mark registration)
We mentioned in the opening sections of the guide, the changes that had been made to the Trade Marks Act to guard against the registration of trade marks based upon Māori text, images and other signs, where the registration and use of the mark was likely to prove offensive to a significant section of the community, including Māori.
When someone applies to register a trade mark that is or appears to derive from a Māori word or imagery, the application will be referred to the Māori Advisory Committee. The Committee advises the Commissioner of Trade Marks whether the application is likely to be offensive to Māori. Where this is found to be the case, it is likely that IPONZ will raise concerns that the mark is not registerable under the Trade Marks Act 2002. For more information on the Trade Marks Māori Advisory Committee, see www.iponz.govt.nz
Are offensive trade marks the same as trade marks in poor taste?
No. A trade mark must be rejected if the use or registration would be likely to offend a significant section of the community, including Māori. However, a distinction must be made between marks that are offensive and those considered by some to be in poor taste. The Trade Marks Act only prohibits the registration of marks that are likely to offend a significant section of the community. It does not prohibit the registration of marks that are in poor taste.
What is a trade mark?
A trade mark is often referred to as a "logo", "brand" or "brand name". Trade marks can include words, logos, colours, sounds, smells – or any combination of these – as long as they can be graphically represented. Once a trade mark is registered, the ® symbol may be legally used against the trade mark. A ™ symbol shows a sign is being used as a trade mark but does not indicate whether the sign is registered.
A trade mark must be sufficiently unusual or fanciful so that consumers would only associate it with one trader. Consumers who are satisfied with a particular product are likely to buy or use the product again in the future.
Trade mark protection is provided for by the Trade Marks Act 2002.
How can trade marks help my business or organisation?
Trade marks act as a badge of trade origin, helping consumers distinguish your goods or services from those of another trader. They are a marketing tool that gives consumers information about the source and quality of the goods and services sold under the trade mark. If trade marks are managed well, they can become one of the more valuable assets within your business.
For some businesses it can be their most valuable asset. An owner of a trade mark with a good image and reputation can have a competitive edge in the market, as consumers are more likely to purchase a product or service sold under a trade mark that has reliable quality.
What qualifies for trade mark protection?
Almost any sign that is capable of being represented graphically (i.e. you can draw or paint), and is capable of distinguishing the goods or services of one person from those of another, can be registered as a trade mark.
What does not qualify for trade mark protection?
You can't register a trade mark that indicates the kind, quality, intended purpose or dollar value of the product or service, unless it is presented in a unique or unusual way, or incorporated into a trade mark as one of its elements.
A trade mark can't be registered if it:
- is the same as or similar to, or a translation of, trade marks already on the Register of Trade Marks;
- is the same or similar, or a translation of, another trade mark that is well known in Aotearoa-New Zealand;
- is likely to mislead, confuse or is offensive;
- is a generic term, such as soap for soap products;
- is a superlative (such as best, super);
- is a descriptive term, such as kai for food, or sweet for ice cream;
- is a place name associated with the good or service, such as Bluff for oysters;
- is a name of a plant variety;
- 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/coat of arms, insignia, orders of chivalry or state emblem; and
- suggests endorsement or licence by a particular person or organisation.
Trade marks must be distinctive
A trade mark must be distinctive of a single trader's goods or services. This means it must be unusual enough that consumers would identify it with only one trader. If a trade mark isn't distinctive, the public won't identify the trade mark as a "brand" or "logo". For example, the term "budget supermarket" for retail of food and household items is unlikely to identify one trader from any other in the same kind of business. The term could be used in connection with many different traders, so it would be unfair to grant a monopoly of such a term to any one trader.
Trade marks can't be descriptive of a characteristic of the goods or services
Marks that simply describe the goods or services they relate to are unlikely to be able to be registered. For example, the word "apple" can't be registered as a trade mark for fruit. However, APPLE® is not descriptive of computers and therefore is distinctive in relation to computers.
Trade marks can't be terms that are customary in the trade
Marks that are commonly used in relation to the goods or services the mark is being used for may also not be distinctive. A colloquial or generic term that has been commonly used to describe a characteristic of the goods or services might not be able to be registered. For example, the term "extra supreme" is commonly used to describe a pizza with many toppings, and so couldn't be registered as a trade mark in relation to pizza.
What is a certification trade mark?
Certification trade marks certify that the goods or services that bear the certification trade mark are of a particular character or standard that has been formally associated with that product. Anyone who complies with the character or standard is entitled to use the mark. The Heart Foundation Red Tick® is one example of a certification trade mark that most New Zealanders will be familiar with.
Certification marks may be useful for indigenous communities as a means to inform consumers of the origin, quality and authenticity of their indigenous products or services.
What is a collective trade mark?
Collective trade marks are trade marks that belong to a collective group whose members use the trade mark to promote a level of quality or other characteristic. One example of a collective trade mark is the Registered Master Builders Federation®. The mark represents builders whose work has been determined to be of a certain standard and quality.
Collective marks may also be a useful way of protecting collectively held knowledge and informing consumers of the quality and authenticity of their indigenous products or services.
What rights does a trade mark provide?
Once a trade mark is registered, the owner has the exclusive right in Aotearoa-New Zealand to use that trade mark in relation to any goods or services in respect of which the trade mark is registered. This means no one else is permitted to use the trade mark or a trade mark similar enough to deceive or cause confusion in the course of trade including, for example, manufacturing, importing and/or selling such goods.
Trade mark owners may assign or license their registered trade mark to another person.
How long does protection last?
Once your trade mark is registered, the initial registration lasts for a period of 10 years from the date IPONZ received your application. Your can renew your registration for further periods of 10 years, for an indefinite period.
Do I have to register my trade mark before I can use it?
No. You are not legally required to register your trade mark to use it. Before using a mark that is not registered it is a good idea to check that you are not infringing anyone else's trade mark.
So why register?
Registration of a trade mark gives the owner a statutory monopoly. If another person uses the same or a similar trade mark as yours in relation to the same or similar goods and services, as long as the date of registration of your trade mark precedes the other person's use, you can generally sue for trade mark infringement. Because you have this statutory right, you don't need to have established a reputation in the trade mark, or to demonstrate that the other person's use is causing damage to your business.
If the mark is unregistered, in order to protect your mark, you will be relying on what is called the common law action of passing off (see page 38) or take proceedings under the Fair Trading Act 1986. It can often be much harder in these circumstances to prove that your unregistered trade mark is being infringed and you will need to be able to demonstrate that:
- you were first to use the trade mark;
- you have established a reputation in the use of the trade mark (essentially that you have built up goodwill through the use of the trade mark);
- the other person's use of the trade mark is misleading or confusing; and
- the other person's use is causing damage to your business.
Enforcing unregistered trade marks can be a long and costly exercise.
How do you register your trade mark?
Searching for trade marks
Before either applying to register a trade mark or using a trade mark, you should check that your trade mark, or a similar trade mark, is not already registered or in use by another person. This could alert you to the possibility of breaching someone else's rights in a trade mark. If a similar or identical trade mark is registered or in use it may, however, still be possible to use that mark provided the goods or services it covers are so different that people are unlikely to be misled or confused. In this situation, seek professional advice before using the mark or applying to register it.
You can search for registered trade marks by:
- viewing the register of trade marks provided by IPONZ on its website; or
- getting IPONZ to conduct a search of the register on your behalf (a fee is charged for this service).
You should also search the existing market of your product or service for unregistered trade marks that look or sound the same or similar to yours. An Internet search for the mark may help you identify identical or similar unregistered trade marks already in use by other parties. You should, however, consider seeking professional advice from a patent attorney or trade marks agent to ensure you are not infringing anyone else's trade mark.
Making an application
In Aotearoa-New Zealand, all trade marks are registered through IPONZ. You can do this either by sending a completed application form and application fee to IPONZ or by using the online application facility on the IPONZ website.
To secure a filing date for your application you must supply the application form, together with the prescribed fee and:
- a clear representation of the mark;
- your name and address; and
- a list of the goods and/or services that you want to register.
Different goods and services are classified into different classes for the purposes of registration. If your trade mark is to be used for goods or services falling in two or more classes, you will have to register your trade mark in each different class. This is explained in more detail below.
What is a trade mark specification?
When you apply to register a trade mark, you must include a list of all goods and/or services that you want to register the trade mark for. This is called the specification of goods or services. When deciding on your specification, you must:
- have an honest intention to trade in all goods and/or services listed in the specification;
- ensure the list is clear so that anyone looking at the description will know the exact nature of the good or service; and
- ensure the specification is a description of "what" you trade in not "how" you trade in them. For example it is not necessary to say "the trade mark will be used on a letterhead".
What are trade mark classes?
When you have decided on what your specification of goods and/or services will contain, you need to classify your specification of goods and services. Classification is the term used to describe the system of categorising goods and services of a similar kind into classes for the ease of identification and searching.
The current system used in Aotearoa-New Zealand is made up of 45 classes – classes 1 to 34 relate to goods, and classes 35 to 45 relate to services.
For more information on classification see the IPONZ website.
How much does it cost to register a trade mark?
Trade marks are organised or categorised in terms of "classes" of goods and services. The fees for registering a trade mark are currently $100 per class (excl GST)9.The renewal fee, after 10 years and every 10 years thereafter, is $250 (excl GST). The fee for trade mark registration is for one class only. If you wish to register your trade mark in relation to goods or services in more than one class, additional fees are required.
Is a trade mark the same as a company name?
No. Trade marks are exclusive rights to use a brand name. Company names are registered legal identities registered with the New Zealand Companies Office. Registration of a company name only prevents another company being incorporated under an identical or almost identical name. A company name registration will not prevent the registration of the same or similar name as a trade mark.
To avoid potential disputes you may wish to check the register of company names to determine whether anybody is already trading under a name that is similar to a name you may wish to trade mark. This can be done free of charge via the Companies Office website.
Who enforces trade mark protection?
A trade mark is personal property, so it is your responsibility as the trade mark owner to ensure other people don't use your trade marks on goods or services that are identical or even similar to your own.
If you discover another person is using your trade mark, you can apply to the High Court for remedy. Types of remedy that the Court may grant for trade mark infringement include injunction, damages or an account of profits. In reality, most trade mark disputes are settled out of court.
You should consult a registered patent attorney or an IP lawyer if you consider that your trade mark rights are being infringed.
Does trade mark protection apply overseas?
A trade mark registered in Aotearoa-New Zealand will only provide protection in Aotearoa-New Zealand. To obtain protection for your trade mark in other countries, you or your representative will need to apply to the IP office in the overseas countries of interest. For example, in Australia you need to register your trade mark with IP Australia (see the IP Australia website for more information).
However, you may be able to use your Aotearoa-New Zealand application date if you submit an overseas application for the same trade mark within six months of applying for registration in Aotearoa-New Zealand.
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