Key IP considerations if using NZ's imagery and iconic wording in your branding strategy.
For manufacturers and marketers of New Zealand-made products, the clean green New Zealand image can be relied on to bring in sales - particularly in international markets. In the natural products industry in particular, the New Zealand image can be a huge selling point, helping to promote the purity, freshness or environmentally friendly aspects of a product.
When using New Zealand's image as part of your marketing strategy, it can be easy to rely on common words, phrases or images to form part of your brand. Often the easiest way to do this is by incorporating the word "kiwi", using a logo that includes a kiwi, a fern motif or koru, or altering the spelling of your brand name to include "NZ" in the wording.
These techniques make it obvious1 to a potential customer where the product originates from. But given how widely they are used, do they give your brand its own unique selling point, and what are the legal considerations?
Availability for Registration
A cursory search of the Intellectual Property Office of New Zealand's (IPONZ) database for trade mark registrations that include the term "kiwi" gives more than 1,800 results. A search for devices or logos containing ferns gives more than 1,600 results - a clear indication they are hugely popular and well used as brands or parts of brand identities.
To be registerable, your trade mark has to be able to distinguish your product or service over and above other traders' same or similar goods or services. With so many different examples already on the register, it can be difficult to ensure a trade mark incorporating a traditional New Zealand word or image is distinctive in its own right. It may need to use additional words or pictures to ensure it can be distinguished over other trade marks on the register.
A more original trade mark, particularly a made up word or logo, will have a greater chance of being available for registration than the widely used kiwi icons.
Scope of Protection
If you do decide to apply for a trade mark that contains common New Zealand imagery or words, it is also worth considering the scope of protection that you will end up with if the mark is registered.
When the courts are deciding whether a trade mark is infringed, they will look at how similar the registered mark and the potentially infringing mark are, and on what goods and/or services the potentially infringing mark is placed.
In a market where a kiwi image is common place, the goal posts will be fairly narrow. For example, a registered trade mark for a stylised kiwi on a natural cosmetics product will not provide the owner2 with a monopoly3 to use any stylised kiwi on those products, just the particular stylisation that has been registered. While very minor variations of the trade mark may be found to be deceptive or confusing (and therefore potentially infringing), in a market saturated with kiwi, the trade mark owner is likely to have a difficult time showing that a kiwi that is only similar, but not identical to theirs is infringing their trade mark registration.
Words or imagery derived from Maori
Koru, moko and other Maori imagery and words are often used as alternative ways to give a product or service a New Zealand association. While the koru is a well-used Maori image, other less well-used Maori words or images may provide distinctiveness to a product or service.
When a trade mark that contains any type of Maori sign is applied for, the application4 will be referred to the Maori Advisory Committee at IPONZ. This committee will then provide advice to IPONZ5 on whether or not the use of the Maori sign on the goods, or for the service applied for, is offensive to Maori. While the advice provided by the advisory committee is not binding, it will still be taken into account by IPONZ when it is considering whether or not to grant a trade mark registration. For this reason, the use of any Maori sign or imagery should be well considered as to its appropriateness before it is adopted as a brand strategy.
Other ways to identify a product with New Zealand
If you do decide to develop a brand that does not use common New Zealand icons or imagery, there are still ways you can provide the product with a New Zealand association.
One option is to use the 'New Zealand Made' logo which is well known to most New Zealanders. In order to use this trade mark, you are required to become a member of Buy NZ Made. You will need to show your product meets the requirements to use this country of origin labeling, and membership needs to be renewed every year.
A Buy NZ Made membership allows you to use a variety of different styles of the 'New Zealand made' logo that can be used to suit differing marketing strategies. One of the main advantages of using a mark is that it can be placed anywhere on a product. This gives the user flexibility to promote their own unique brand, while still advertising elsewhere on the packaging or labeling that the product is proudly New Zealand made.
Statements such as "Product of New Zealand" or "Proudly New Zealand made" can be added on products or packaging. The rules of country of origin labeling are being looked at under the Fair Trading Act. Care should be taken that such is claim is not used unless the user is confident the product is entitled to this claim.
It is worth noting that the Trade Marks Act in New Zealand does not provide any regulation or require any evidence as to the accuracy of "made in New Zealand" claims6. From a registration perspective, these statements on their own are not registerable, as they are merely descriptive of a product's characteristic. However, if combined with a registerable trade mark, then they are likely to be registerable in combination.
The pure New Zealand image has obvious benefits now, but there is always a risk that perceptions can change (rightly or wrongly). As environmental issues become more topical, there is likely to be more attention focused on how environmentally friendly or "green" New Zealand really is.
If this image, for whatever reason, is compromised, will brands that are reliant on this image suddenly become unpopular? Will your brand be strong enough to stand on its own?
For those reliant on New Zealand origins and claims to the use of pure New Zealand ingredients, will the brand be compromised if for some reason raw materials must temporarily or permanently come from overseas?
Building a brand from the outset that is individual and stands for a unique set of values and characteristics will help to future proof against some of these unknowns. While it is tempting to rely on old favourites, you will be rewarded in the long run by choosing an original trade mark that can be well protected and enforced, and stands out amongst the many kiwi and silver ferns on the shelf.
1For a New Zealand patent to be valid, it must
not be obvious, and must involve an inventive step, over
known technologies. See novelty, anticipation and
inventive step for further details
2A legal term to describe a person entitled to make an application for a patent. In New Zealand this includes any person claiming to be the true and first inventor, the assignee of the inventor, or the legal representative of a deceased inventor or his/her assignee.
3A patent grants the patentee a monopoly in the invention that is the subject of the patent. The monopoly extends to the exclusive rights to make, sell, use or import the invention.
4In 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.
5The Intellectual Property Office of New Zealand. IPONZ (formerly called the Patent Office) is a Government agency that is part of the Ministry of Economic Development and is responsible for the examination, granting/registration and administration of registrable intellectual property rights such as patents, designs and trade marks.
6Numbered paragraphs at the end of a patent complete specification which define the scope of the invention protected by the patent. The purpose of the claims is to define clearly and with precision the monopoly for which protection is sought so that others know the exact boundaries of protection.
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 & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.