Information
> Trade Marks
Why register a trade mark?
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The goodwill of a particular product or service is often
integrally associated with a trade mark. Marketing strategies rely
on consumers purchasing items by reference to a well known mark,
despite the availability of equivalent or better products. It is
the ability of a reputable trade mark to give a product immediate
market acceptance that tempts unscrupulous competitors to use the
same mark or confusingly similar marks.
Registration of a trade mark confers on the registered owner the
exclusive right to use that mark throughout New Zealand in relation
to specified goods or services. The registration can also be used
to restrict the use of the same mark or confusingly similar marks
by others.
The penalties for infringement of a registered trade mark are
substantial and may include damages, an account of profits earned
by the infringer, litigation costs and surrender of all material
carrying the infringing trade mark, as well as corrective
advertising.
Trade mark registration protects the time and money spent
promoting goods or services and any associated reputation and
goodwill. As the goodwill of a business is often realised in its
trade marks, registration of these marks provides a means by which
the goodwill may be defined, and thereby more readily sold or
licensed.
In the majority of cases, legal action is not necessary to stop
infringement of a registered trade mark. Registration provides
clear evidence of ownership and the right to exclusive use of the
mark, irrespective of where in New Zealand the trade mark is used.
Usually the mere existence of a trade mark registration is
sufficient to deter competitors from adopting the same mark or a
similar mark.
Some trade marks are difficult to register (typically because
they are too descriptive), but it can still be worthwhile applying
for their registration for the following reasons:
- Proprietary rights to a mark are substantiated. Both the
application date and application number can be referred to in
letters to unauthorised users of the trade mark;
- The existence of the application on the Trade Mark Register may
act as a deterrent to others wanting to use the same mark or a
similar mark. It is common for people to search the Trade Mark
Register before using or deciding upon a suitable trade mark.
Furthermore, the Trade Mark Register is often searched prior to
selecting a name for a new company; and
- A trade mark application is a readily identifiable form of
property which can be used as the basis of licences or assignments
with other parties.
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