|
• What are the categories available?
There are 42 classes of goods and services. Registration is effected on a class basis, eg clothing, headgear and footwear is classified in class 25. The goods classes are classes 1 to 34 and service classes 35 to 42. (Attached is a synopsis of the international classification of goods and services.)
• What can I register?
In order for a mark to be registerable it must meet the requirements of sections 14 or 15 of the Trade Marks Act, which in essence is the requirement that the mark is distinctive.
The primary function of a trade mark is to identify, in other words to distinguish goods or services from one seller or group of sellers from those of their competitors. Distinctiveness is the most important attribute of a trade mark from which the trade mark derives its marketing value, effectiveness and legal strength.
• In developing a trade mark, it is advisable to avoid:
- Family surnames
- Initials
- Geographical names
- Descriptive or laudatory terms
- Any name which could be confused with any existing name
- Those names which carry any negative connotations in English or in any other
language in which the name is to be used
• How much does it cost to secure trade mark registration in New Zealand?
In the order of $1,000.00 per trademark class including the search costs but excluding the application fee of $112.50. (Please note that this is based on the assumption that the prosecution of the application is relatively straight forward).
• How long does it take to achieve a registration?
Once an application has been filed an examination report issues from the Intellectual Property Office giving the applicant 6 months to place the application in order for acceptance.
Once the application is in order for acceptance, it is advertised in the Intellectual Property Office Journal where third parties have three months from the date of the advertisement to oppose the grant of the registration.
Accordingly, the entire process takes approximately one year from the filing of an application to receiving a registration certificate. The rights provided by a registration are backdated to the date of the application.
• How long does a registration last?
The rights granted under a registration are granted for a period of seven years from the date of application and are renewable at fourteen year intervals thereafter.
• What are the key things to know?
In attempting to develop a legally protectable trade
mark the following should be noted that The more descriptive
the name the more difficult it will be to prevent its
use by others.
The reasons for this are that they are
indistinguishable from similar terms that are already
used or are soon to be used by the competition or they
expose the goodwill accumulated by the company to easy
capture by the competition, eg. "First" (the courier
company).
A stubborn preference for descriptive names
indicates the promoters select trade marks on the basis
of their informative value, without a consideration
to the marketing and legal consequences. Choosing an
appropriate logo and/or graphic support can reinforce
the trade mark. Like trade marks a logo can be an enduring
asset. They should therefore be distinctive. If the
legal status of a trade mark is weak, a business can
enhance the protectability of a trade mark by the addition
of a distinctive logo or graphic, which may be registrable
as a trade mark.
A trade mark registration gives the registered proprietor of the trade mark the exclusive right to use and control the trade mark throughout New Zealand for goods/services for which the trade mark is registered. Registration of a company name does not confer any proprietary rights in that name.
• The Trade Marks Act is the only act which gives statutory rights to a name.
The Process:
Step 1. Effect a search of the trade marks and companies office registers, the white and yellow pages to ascertain the availability for use of the trade mark
Step 2. Assuming the search is clear, file a trade mark application with the Intellectual Property Office
Step 3. Official action from the Intellectual Property Office issues
Step 4. Submissions filed to overcome Intellectual Property Office's objections
Step 5. Notice of Acceptance issues from the Intellectual Property Office
Step 6. Payment of Registration fee
Step 7. Receipt of Registration Certificate
Step 8. Payment of renewal fees
|
