New Zealand: Managing Your Trade Mark Portfolio - Improve Protection While Controlling Cost

The time taken to manage your trade mark portfolio is time well spent. This investment will ensure that your most valuable and strategically important brands are adequately protected. At the same time, it will highlight areas where ongoing trade mark spend is not justified.

As part of your trade mark management, consider the following:

If launching a product or service internationally, consider whether full searches are required in all potential markets. It may be that searching in your main markets (where if the mark is not available you would change to another mark) will be sufficient. More limited searches in other markets may be appropriate. If you are not launching your product immediately, you could simply file applications and see whether objections are raised during the examination process.

Ownership of the copyright in trade marks comprising stylised wording or a logo will supplement any trade mark protection you obtain. To ensure that you own the copyright in trade marks which include graphic features, you may need a deed of assignment from the designer or artist.

3. Design Registration For Logos

In some jurisdictions, a logo that includes a novel design element can be registered as a design. While these jurisdictions are limited and the availability of design registration is restricted, design registration could be a cost effective way of obtaining protection covering a broad range of goods and services.

4. Control Your Portfolio Internationally

When filing internationally, the majority of the costs relate to official agency fees. Spending a dollar to make a strategic decision in New Zealand which saves a pound is worthwhile. For Australia, check your trade mark advisors have the necessary expertise to deal directly in Australia without appointing an agent, as this will save costs.

The trade mark registration process can take years, especially overseas. This means you may receive objections (and corresponding advice) relating to marks which are no longer a priority given the time elapsed since filing. Review your pending matters regularly so you can take steps to consolidate applications if your branding priorities change.

Deal with renewals strategically. You need to understand your mark, the market and your other existing protection in order to make an informed decision on trade mark renewals. Deal with renewals in advance of the deadline to maximise flexibility.

In seeking protection, think of where your use of the trade mark is likely to go. Protect not only for today, but potentially also for tomorrow. Unduly narrow protection may inhibit your ability to expand use of the mark down the track.

Trade marks which are not very important today may be vital in the future. Equally, marks which are difficult to register now may become registrable through use. Review your portfolio regularly to ensure that the protection matches your strategic needs.

Seek input and advice from your trade mark firm to ensure that your portfolio is strategically balanced and managed efficiently.

An edited version of this article was published in Corporate Lawyer magazine Winter 2006.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.