HOW DOES THE TRADE
MARKING
PROCESS WORK?
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1.Initial assessment
A search and preliminary advice
report will provide you with an
assessment of whether your
trade mark is likely to comply with
important areas under the Trade
Marks Act 2002. Trade marks
containing some words may not be
able to be registered - or only with
permission of a third party.
2.Determine the trade
mark type
The most common types of trade
mark are word trade marks; image
trade marks do not contain any
words; and combined trade marks
are a combination of a word and
image.
3.Owner
A trade mark is a valuable asset,
and needs to be managed like any
other property right. It will need
to be owned and looked after by
companies, individuals, partners,
company owners or other legal
entities. Determining who owns a
trade mark is an important decision.
4.Work out the
specification
You will need to make a list of
all goods and/or services you
want to use the mark for – called
a specification of goods or
services. You will also have to list
the class(es) that the goods or
services fall into. Check what your
competitors or peers are using.
5.Check the mark
isn’t used
Any application for trade mark that
closely resembles or is identical
to someone else’s will probably
be objected to, citing confusion.
You need to check that the same
or similar trade mark is not already
registered.
6. Become a
registered user
For trade mark applications,
it’s mandatory to apply and
communicate with the New
Zealand Intellectual Property Office.
7.Application process
If you’re applying for more than
one trade mark, and you don’t have
experience applying for them, you
should probably seek advice from
an intellectual property attorney
(lawyer) before continuing.
8.Next steps
A report will be produced within 15
working days – and trade marks are
often approved quickly. However,
sometimes the trade mark can’t be
registered, in which case you’ll be
advised of the rationale behind the
decision.
9.Wait for the
registration period
After you receive your acceptance
notice, your trade mark application
is advertised. If there is no
opposition to your trade mark
within three months, then your
application should be registered at
a minimum of six months after the
filing date.
10.Protecting your
trade mark rights
Once you’ve successfully received
your full trade mark registration,
you should protect your trade mark
rights by: using the ® symbol (a
™ symbol doesn’t mean you have
a legally-registered trade mark);
fulfilling your responsibility to
IPONZ by maintaining up-to-date
ownership and address details,
and; monitoring your trade mark
against infringements.
11.Registering
overseas
When you apply for a trade mark
with IPONZ, that application is
only for a right in New Zealand.
If you decide at any point after
making your application that you
need to protect your trade mark
in other countries, you can use
an international trade mark filing
system called the Madrid Protocol.
Alternatively, you can apply directly
for your trade mark in each country
you want your brand protected in.
brand name, colour or other distinctive feature
to the same or similar shape. The Carolina bottle
shape on its own qualifies as a sign used in the
course of trade, and the judge said PepsiCo’s and
Frucor’s use of that sign was likely to be taken as
use of a trade mark. However, when comparing
the Carolina bottle with the registrations for the
contour bottle, the judge said they were not
sufficiently similar to establish infringement –
in fact, only one of the five distinctive features
portrayed in the Coca-Cola contour bottle
registrations had been used in the Carolina.
The bottle’s embossed horizontal wave pattern
further distinguished it from the contour bottle.
The judge also noted that despite Coca-Cola’s
domination of the market, no evidence of
confusion was available and it was unlikely that
any such confusion would remain undetected.
Coca-Cola’s passing off and breach of the Fair
Trading Act actions likewise failed due to lack of
similarity and lack of confusion.
particularly through the Ministry of
Foreign Affairs. Australia is already
leaning in on New Zealand producers
by claiming to have more than 80
species of leptospermum scoparium
- the plant used to make mānuka
honey - while New Zealand only has
one. But one expert says Australia
has made its own definition and
is misleading consumers. Mānuka
Honey Appellation Society John
Rawcliff says mānuka is a Māori
name and consumers expect it to
come from New Zealand. “Their
actual definition is very, very weak.
That is, it’s half, or even lower, as
what we would describe as mānuka.
Their multi-floral definition is so
broad, it doesn’t have a criteria,
any honey virtually in Australia
could be called multi-floral mānuka.
Now that’s, to be blunt, appalling,
it’s misleading the consumer, it’s
wrong.” A group of East Coast land
trusts say up to 70% of mānuka
honey is made on Māori land, and iwi
need a say, Miere Coalition’s Victor
Goldsmith says. “Our responsibility
as kaitiaki of Aotearoa and all
our taonga including our native
species and mānuka, that’s our
intergenerational obligation to ensure
our next generation is in a better
state.” Both New Zealand and the
UK have accepted “mānuka honey”
as a certification mark, which will
allow the Mānuka Honey Appellation
Society to seek further protection of
the term. But trade marking mānuka
honey will be long and expensive,
Rawcliff says. “Scottish Whiskey
I think started in 1919, it’s taken a
long time. Champagne took its time.
Sadly, the law takes its time and we
have to work through the process.”
The industry is currently seeking
certification marks in China and the
United States.
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