The Trade Marks Act 2002 allows for the registration of words, logos and other material as trade marks.
The law recognises that traders may promote their goods and services by reference to names, logos and other aspects of branding, and that those features may become associated with that particular trader in the minds of members of the public. Branding helps consumers to choose between goods and services, and to that extent is regarded as something to be encouraged.
The Act seeks to reward and protect that investment by traders, but at the same time ensure that monopolies are not granted in respect of marks which other traders might, in good faith, want to use, or to marks which are too close to existing marks.
The Trade Marks Act sets out rules dealing with:
(a) what can be registered as a trade mark;
(b) the application process;
(c) procedures for objecting to trade mark applications or registered marks; and
(d) infringement and the scope of the monopoly granted to an owner.
What is a trade mark?
The Act defines a trade mark as any sign capable of:
(a) being represented graphically; and
(b) distinguishing the goods or services of one trader from another.
A sign includes a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word; and any combination of signs. In practical terms, most marks comprise a word or words (word mark), or a logo or a word in stylised form (device mark).
The applicant must specify the goods and services for which registration is sought. There has been some international standardisation in this area, and IPONZ uses the Nice international system of classification. The Nice Classification contains 34 classes of goods and 11 classes of services. The applicant must specify the Nice Classification classes as well as the particular goods and/or services applicable. However, it is possible to apply for registration across multiple classes.
The register of trade marks is maintained by IPONZ. Disputes about whether a mark should be registered are determined by the Assistant Commissioner of Trade Marks, whose decisions can be appealed to the High Court.
Once an application is filed, it is examined by staff at IPONZ to determine whether the application should proceed to acceptance. This might involve correspondence between the applicant and IPONZ, and if IPONZ does not consider that the mark should be registered the applicant may require a hearing.
If the mark is accepted by IPONZ, the application will be publicly advertised in the IPONZ Office Journal. Third parties can then decide whether to oppose the trade mark application. The grounds for opposition are principally those set out in sections 17, 18 and 25 of the Act. An opposition must be lodged within 3 months of the date of advertisement.
If there is no opposition, the mark is lodged the mark proceeds to registration.
Further details about how to apply for a trade mark and the applicable IPONZ costs can be found on the IPONZ website.
Any material which consists of a “sign” (as defined in the Act) is capable of registration as a trade mark, subject to:
(a) Section 17, which contains absolute grounds for refusal;
(b) Section 18, which contains grounds for refusing non-distinctive trade marks unless the applicant can show that they have acquired distinctiveness in the mark; and
(c) Section 25, which provides that the Commissioner must not register a mark which is too close to an existing mark.
These grounds may lead to IPONZ refusing to register the mark. Even if a mark is accepted by IPONZ and advertised, a third party can rely upon any of these grounds to oppose registration of the mark.
It is also worth noting that a third party can apply to revoke a mark or rectify the register on the basis that it ought not to have been registered, but the grounds are more limited than the grounds available under an opposition prior to registration.
Although a trade mark registration is permissive, a mark can be revoked if it is not genuinely used over a three year period. This is to stop traders from preventing others from using brands where they are not themselves using the mark.
A trade mark is infringed if:
(a) an identical sign is used in relation to identical goods or services;
(b) an identical sign is used in relation to similar goods or services;
(c) a similar mark is used in relation to identical goods and services; or
(d) a similar mark is used in relation to similar goods or services.
In relation to (b), (c) and (d), the plaintiff must also show that the use of the mark is likely to cause deception or confusion. There is an issue of proportionality here – the closer the sign and the goods and services, the more likely that deception and confusion will be found.
When considering infringement, identical has a strict meaning. Addition of a letter may be sufficient for a mark to be regarded as simply similar rather than identical.
Complications arise where a word is registered in stylised form as a logo. It can be easier for traders to register such marks as compared with the word or words if these have a descriptive aspect to them. Nevertheless, the trade mark owner may assert a monopoly over the word when sending a cease and desist letter.
A mark is only infringed if the defendant has used the mark “as a trade mark”. This has a particular meaning in trade mark law, but relates to the essential function of a trade mark.
It is possible for clients to file trade mark applications themselves. They can also undertake basic searching to see which marks their competitors have, as the IPONZ database can be searched by mark or proprietor.
Nevertheless, it can be more cost effective in the long run to obtain specialist advice at the outset, as rebranding can be very disruptive if the chosen mark turns out not to be registerable either on its face or due to third party rights.
A common mistake is for traders to adopt words which are common to the trade, descriptive or generic as part of their brand. Even if such marks are registered, they may confer only very limited monopoly rights and can lead to ongoing disputes which are an unnecessary distraction from a client’s business. Distinctive brands (i.e. those which have no direct relationship with the goods or services) may require more investment in the short term, but can more easily be protected if the business does take off.