Trade mark registrations are intellectual property rights you can use to protect key aspects of your business. They act as a "badge of origin" for customers, identifying your business as the source of goods or services they purchase. This article will explain what goods or services your trade mark registration can protect in New Zealand.
What Does a Trade Mark Registration Protect?
A trade mark can be a sign that represents your business, such as your business name, logo, or slogan, although less conventional ones exist. These include commercial jingles, scents, or colours. Your trade mark rights typically only extend to the goods you trade in or services you offer.
A trade mark registration is a powerful intellectual property right that you can use to protect your business' interests. In particular, it inhibits other traders from replicating or imitating your trade mark for the same goods or services.
For instance, suppose your business produces and distributes your own distinctive clothing products, using high-quality materials to draw customers. In this case, you can incorporate your trade mark in your branding and register it to protect your business. You can also utilise the legal protections granted to you by the Intellectual Property Office of New Zealand (IPONZ).
As a result, if another clothing business uses a similar trade mark to yours on their goods, they may be infringing your intellectual property rights. In addition, they may confuse customers and draw them away from your business. This can not only affect your customer base, but also potentially damage your business' reputation. However, with a registered trade mark, you have legal powers available to enforce your trade mark rights and stop this other party.
Trade Marks and How They Apply to Goods or Services
When you apply to register your trade mark with IPONZ), your application must include specific information, such as the:
- specific elements of your trade mark;
- owner of your trade mark;
- type of trade mark you wish to register; and
- goods or services you want your trade mark registration to cover.
The scope of protection for your trade mark only extends to what you apply to use it for. Therefore, your trade mark application should specify what you wish to protect.
When assessing your trade mark application, IPONZ uses your specification as a reference for assessing your trade mark's:
- potentially misleading or confusing nature; and
- similarity to existing trade marks for the same (or similar) goods or services.
Conversely, if someone uses a trade mark that is confusingly similar to yours, but it applies to completely different goods or services, you may not have a valid trade mark infringement claim.
[content box] The logo trade mark for your clothing products may apply to jackets, knitwear, and other specific clothing goods. So, if someone else uses a similar logo for their plastic storage products, your specifications likely do not overlap. Therefore, your scope of protection may not extend to grant you rights to pursue that other party.
What Goods and Services Can My Trade Mark Registration Cover?
Ultimately, what you choose to protect as a part of your trade mark specification is up to you. However, you should take due care when completing this process. You must have an honest intention to trade in the goods or services you specify. If your specification is unreasonably broad, IPONZ will likely not approve it. On the other hand, you do not want to make it too narrow, as you may miss out on vital goods or services that you trade in.
Whatever terms you choose to describe your goods or services, they must be clear enough that an ordinary person can understand what your trade mark registration covers. Notably, IPONZ provides a trade mark specification builder on their website that details pre-approved terms for goods and services. This tool can be useful for building your specification.
Additionally, if you only use these pre-approved terms in your trade mark application, you can get a discount on your application fee, from the starting $100 down to $70 (excluding GST).
Classifying Your Goods or Services
Beyond specifying the goods or services you want your trade mark registration to cover, you must also categorise them into their respective classes. IPONZ uses the internationally recognised Nice Classification System to allow for more efficient organisation of trade marks. There are 45 classes in total, with classes 1 to 34 relating to goods and 35 to 45 relating to services. Your trade mark fees will depend on the number of classes you select.
When you apply to register your trade mark, you must specify what goods or services you want it to cover. These determine your scope of protection, and what areas you have appropriate trade mark rights in.