New Zealand: Clever thinking helps to protect future of Kokako - IP strategies fpr brand protection

Award winning organic treats company Kokato has turned to James & Wells to develop a clever IP strategy which protects its valuable brand.

As Kokako has grown and its product range expanded, its IP¹ protection requirements have become more complicated.

Kokako's distinctive logo - a stylised image of the endemic kokako bird - is a symbol of sustainable and ethically produced food. James & Wells partner Simon Rowell says the key has been to protect this logo and the company name in all relevant categories, including a diverse range of product and services.

The IP strategy has also included an emphasis on protecting future Kokako expansion. A potential move into the Australian market has been protected through pre-emptive registering of the relevant trade marks.

Through a focus on IP protection, Kokako can face its exciting future with a strong suite of IP protecting its valuable business.

Full Case Study Article

From its famously moreish Gluten Free Chocolate Brownies and Ginger Crunch, to its Fairtrade Organic coffee, multiple award-winning company Kokako has a product range which has gained an enthusiastic following and increasing commercial success in New Zealand.

The company's distinctive logo - a stylised image of the endemic kokako bird - is a symbol of sustainable and ethically produced food, and a company which supports New Zealand's endangered fauna.

As was shown with the recent trade mark shock involving the Horowhenua Library Trust and its Koha cataloguing system, and a major US company, it is important for fledgling organisations to consider their intellectual property² (IP) from the outset, and get expert advice.

Thankfully, Kokako founder Mike Murphy had the insight to obtain trade mark registrations for the original version of the company's logo in relation to class 30 (a trade mark class in New Zealand which covers coffee and some food items).

The company sought advice from James & Wells Intellectual Property when it began to grow and expand, having developed a new logo.

Simon Rowell, a Partner and trade mark expert in James & Wells Intellectual Property's Auckland office, says: "Mike wisely realised IP protection needs to be updated as a business diversifies into new areas or changes part of its branding and name."

"Out-dated trade marks are just as ineffective as non-existent ones. It is crucial to closely manage an IP portfolio, and have a long-term strategy in place."

Kokako did not have a trade mark registration for its new logo, and it had over the years expanded its product and service offering considerably.

James & Wells recommended three new trade mark applications, covering a much broader scope of goods and services - including a greater range of foodstuffs and beverages, as well as café and restaurant services.

Kokako now has trade marks registered in four further classes: 29 (processed foods); 31 (fresh fruit and vegetables, seeds); 32 (non-alcoholic beverages); and 43 (provision of food and beverages).

"It is important to have every part of the business covered. You have to think about product and service lines currently offered, and those that are likely to be offered in the future," says Rowell.

James & Wells' recommended trade mark strategy was three-pronged, and designed to fully protect Kokako's highly distinctive brand.

First, a separate application³ for the plain word KOKAKO, which protects that word irrespective of the stylisation applied to it.

Second, an application for the new stylised version of the word KOKAKO used by the business. This covers a situation where someone uses similar font or styling as the new KOKAKO logo, but with a word sufficiently different to KOKAKO to avoid infringement⁴ of the plain word registration.

Finally, a separate registration for the Kokako bird pictorial device that is used consistently on the company's packaging and promotional materials. This protects this pictorial representation, irrespective of any word or logo used with it.

Murphy says: "It was fascinating for us to see how clever a comprehensive IP strategy has to be to prevent our valuable brand being at risk."

"James & Wells was able to.comprehensively understand our business and most importantly our position in the market. The value of investing in an IP strategy cannot be underestimated, particularly given the brand equity we have successfully developed for Kokako."

Simon Rowell says discussions with Kokako aimed at discovering all possible avenues of IP protection required indicated the company sees Australia as a possible future market. So James & Wells recommended conducting a trade mark search in Australia.

When the search results showed the name was not registered across the Tasman, James & Wells recommended filing an application in Australia for the key KOKAKO brand element - which it has now done.

"This ensures Kokako cannot be locked out of Australia, which it could have been if a competitor registered a similar mark before Kokako had done. Clients are often surprised how easy it is for this to happen across international borders, and the Koha case is a prime example."

Simon Rowell says James & Wells, a finalist in the national Sustainable Business Network Awards this year, and member of the New Zealand Business Council for Sustainable Development, enjoys working with clients which have a sustainable focus.

Kokako aims to source only the best fair trade and organic ingredients for its products, both locally and internationally. It supports kokako rehabilitation by sponsoring organisations which work to regenerate pest-free natural habitats.

"James & Wells is putting in place a lot of steps to reduce our environmental impact, and it is great to have strong relationships and share ideas with companies such as Kokako," says Simon Rowell.

"We are driven to help innovative New Zealand companies succeed. If we are to remain internationally competitive and have ongoing economic prosperity, New Zealand needs to protect the nation's intellectual property with clever thinking."

Footnotes

¹Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.
²Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.
³In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive. The terms "application", "pending" or "patent application" are used to describe the status of the application up to grant.
⁴Refers to the commission of a prohibited act with respect to a patented invention without permission from the patentee. In New Zealand, the Deed of Letters Patent confers on the patentee a monopoly to make, use, vend or exercise the invention in New Zealand. Performing any of these acts without the permission of the patentee will amount to an infringement if the patent is current and in force. Permission will typically be granted in the form of a license. Remedies for infringement can include an injunction to restrain further infringement, payment of damages suffered by the patentee as a consequence of the infringement or payment by the infringer of any profit he/she/it made by virtue of the infringement, and legal costs.

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.

James and Wells is the 2010 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.