Business mentor: Trademarks should help you stand apart from rest of crowd

Q: We want to register a trademark for our plumbing business and I thought "Prompt Plumbing" has a good ring to it. It must be a good trademark because it describes our best feature. How do I get it registered?

* Small business sector specialist Sarah Trotman asked John Hackett, intellectual property lawyer and partner of AJ Park in Auckland, to explain.

A: The purpose of registering a trademark is to link products or services with their supplier.

Your trademark will communicate your business image, and the quality of the products or services you offer, to the market. It's important your trademark says the right things about you.

A registered trademark must meet some basic legal requirements. A trademark can be a word, a logo or a picture. It can even be a colour, a sound or a shape, so long as it can be represented graphically and, most importantly, so long as it is distinctive of your products or services.

Distinctive means that your trademark must be able to distinguish your products or services from those of your competitors. One trader cannot own a registered trademark that might reasonably be required by other traders as a description of a product in the same type of business.

For this reason, it is not generally possible to register purely descriptive words such as "Prompt Plumbing" as a trademark. Chances are that many plumbers pride themselves on their prompt plumbing service. If one plumber was allowed to register this as a trademark, then the competition would be unable to describe itself, or market its services, as "prompt".

As well as descriptive words and images, surnames and geographical names that other traders may legitimately want to use are generally not available as trademarks either.

So what makes a good trademark?

You might think that "prompt plumbing" describes the best feature of your business, but it probably describes lots of other plumbing businesses as well. You want a trademark that makes you stand apart from the rest.

Ideally, your trademark will be memorable, pleasing to the ear and eye, and evocative (but not descriptive) of the qualities of your products and services. Creating a great trademark is easier said than done but with a little patience, lots of thinking and maybe some professional help, you could come up with something as successful as Microsoft, Nescafe, Rolex or Zespri.

Once you have decided on a trademark, you should talk to an intellectual property lawyer about registering your mark. Registration will give you the exclusive right to use the trademark and to take immediate legal action against any other trader that uses the same or a confusingly similar mark on the same or similar goods or services.

Applications to register a trademark are filed at the Intellectual Property Office in Wellington. You should check whether someone else has already registered the same or similar mark before applying. The goods and services on which you use your mark need to be specified in your application. Once filed, your application will be processed within two weeks and, provided no questions are raised during the examination process, your trademark may be registered within six months.

The process of registering a trademark can be expensive, especially if you get it wrong. You can minimise costs and ensure you get the best protection available for your mark if you seek the advice of a trademark specialist at the outset.

More questions on trademarks can be directed to John Hackett, partner, A J Park, Intellectual Property Lawyers, at (09) 356-3310 or contact him via the e-mail link below.