I Want to Apply to Register a New Zealand Trademark
July 18, 2012 By Stone Lawyers
Do I really need a lawyer to do that? Strictly speaking, no. Anyone can apply to register a trademark, although the mark being applied for must satisfy the requirements of the Trademarks Act 2002. Registered trademarks can be valuable intellectual property assets, and can be dealt with in similar ways to other forms of property.
Stone Lawyers suggests that you consider obtaining a Trademark Search Report from an experienced trademark lawyer before you make a trademark application or have one made on your behalf. This is because not all brands (words, logos or a combination of both) are capable of being registered as trademarks. A Trademark Search Report is designed to cost-effectively lessen the risk of a trademark applicant being issued with a regulator’s Compliance Report – which halts the trademark application until the regulator is satisfied that the trademark applicant has satisfied its concerns.
A trademark lawyer will start by conducting comprehensive searches to identify any conflicting marks or concerns that may be raised by a regulator such as IPONZ, provide an opinion about whether your brand is capable of registration, and recommend whether or not to file a trademark application.
Or depending on your appetite for risk you could skip the Trademark Search Report and jump straight into making a trademark application. Either way, we suggest you first consider these questions.
» Who is the legal owner of the brand? Is it you personally, a company or other entity that you own or control, or an entity that employs you or paid you to create the brand for it?
» Who uses the brand? If the brand is in use, can you demonstrate this and how?
» Is your brand licensed by one person or entity to another, or is that what you would like to happen?
» If your brand needs to be modified to overcome a regulator’s concerns, do you have the ability and authority to do so?
» Where do you use your brand now, and where do you intend to use it in future?
» Did someone create your brand for you? Where are they located? Did they assign copyright to you?
» Once registered, will you strictly enforce your trademark against anyone who infringes it (if not, what is the point of making a trademark application in the first place)?
» Can you accurately identify and draft the classes of goods or services to which your brand applies? Is your brand similar to any others in any way?
A trademark application begins a legal process that is governed by strict timeframes and rules – all procedural and substantive legal requirements must be met whether you engage a trademark lawyer to assist you or make a trademark application yourself.
ABOUT THE AUTHOR: Richard Stone
Managing Director - Stone Lawyers New Zealand
Copyright Stone Lawyers
More information about Stone Lawyers
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
A trademark lawyer will start by conducting comprehensive searches to identify any conflicting marks or concerns that may be raised by a regulator such as IPONZ, provide an opinion about whether your brand is capable of registration, and recommend whether or not to file a trademark application.
Or depending on your appetite for risk you could skip the Trademark Search Report and jump straight into making a trademark application. Either way, we suggest you first consider these questions.
» Who is the legal owner of the brand? Is it you personally, a company or other entity that you own or control, or an entity that employs you or paid you to create the brand for it?
» Who uses the brand? If the brand is in use, can you demonstrate this and how?
» Is your brand licensed by one person or entity to another, or is that what you would like to happen?
» If your brand needs to be modified to overcome a regulator’s concerns, do you have the ability and authority to do so?
» Where do you use your brand now, and where do you intend to use it in future?
» Did someone create your brand for you? Where are they located? Did they assign copyright to you?
» Once registered, will you strictly enforce your trademark against anyone who infringes it (if not, what is the point of making a trademark application in the first place)?
» Can you accurately identify and draft the classes of goods or services to which your brand applies? Is your brand similar to any others in any way?
A trademark application begins a legal process that is governed by strict timeframes and rules – all procedural and substantive legal requirements must be met whether you engage a trademark lawyer to assist you or make a trademark application yourself.
ABOUT THE AUTHOR: Richard Stone
Managing Director - Stone Lawyers New Zealand
Copyright Stone Lawyers
More information about Stone Lawyers
View all articles published by Stone Lawyers
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
