Many people hold the mistaken belief that by securing a company name they are adequately protecting their brand.
Registration
Registration of a trade mark will provide the owner with a monopoly on the use of that mark in the class or classes it is registered in. Rather than having to allege that your rights have been infringed by way of court action for “passing off”, or having to sue to protect your rights because someone else has registered your brand as a trade mark (because you have neglected to do so), in the online environment this matter may be able to be resolved by presenting your Certificate of Trade Mark Registration to the internet service provider concerned as proof of infringement.
You do not want to develop a strong brand and business only to see it on someone else’s letterhead or website.
There are a number of factors that need to be present before you can obtain a trade mark. You will not obtain a trade mark for a normal word or a geographical location. Often it will assist your chances greatly if your mark is stylised in some distinct way.
There are 45 different classes of product and service for trade mark purposes, and you will need advice as to which class or classes to seek registration in.
Brand Proection Overseas
Another critical point to bear in mind, particularly for export businesses, will be the effect of the Madrid Protocol later this year. What the Madrid Protocol will allow you to do is designate up to 80 countries, including many of New Zealand’s trading partners, in one trade mark application.
While this will make it easier to obtain some protection for your brand in overseas countries, it also means it will be easier for overseas companies to register trade marks in New Zealand. There is likely to be an increase in the number of trade mark applications filed in New Zealand by offshore competitors who are also members of the Madrid Protocol. Oppositions may also increase making it even more important that your trade mark is adequately protected now.
It is critical that New Zealand companies ensure that their trade marks are protected before the Madrid Protocol comes into force in New Zealand. This is expected in October 2012.
Who Should Own the Trademark?
Another essential consideration regarding protection of your intellectual property (IP) in general is who should own your trade mark. It is often good practice for one entity to own your IP (including trade mark, any inventions/products/operating systems developed or patented by the owner), and another entity (most commonly a company) to operate your business. The entity which owns the IP can license the use of that IP to the company that operates the business, but the company that operates the business will not own the IP. This protects the IP from risks associated with the business.
A further advantage of adequately securing your IP is the value this adds to your business in the event that you decide to sell the business, or even expand your business by further licensing or franchising.
In summary we suggest you seek our advice regarding the protection of your intellectual property. This may include advice regarding registration of company names and trade marks, your online presence, structuring of ownership to reduce risk, and licensing.
