Business mentor: Protect your brand with trademark registration

You recently answered a question on intellectual property for a small business. Can you just clarify - can others use my business name?

Small business sector specialist Sarah Trotman asked Marcus Woodhouse, intellectual property (IP) lawyer at AJ Park for advice.

Contrary to popular belief, registering a domain name or company name does not give your business the exclusive right to use a name in the marketplace. What you need is a registered trademark.

To develop and maintain a registrable trademark for your brand follow this four-step process:

1. Creation

Get creative. Use a marketing company or brainstorm to come up with a name. Your trademark should differentiate your product from the products of others. The best trademarks are those which have no meaning in the context of your product or which cleverly allude to your product.

Avoid surnames and descriptive and geographical names as it is difficult to stop others from using similar ones. If incorporating a logo or artwork, be original.

2. Clearance searches

Next, conduct searches to ensure your trademark is not already registered by another trader.

Marketplace searches are also important to see if another trader is already using the same or similar mark.

You should use an IP specialist to ensure your searches are comprehensive and accurate.

If you plan to use your trademark overseas, it is important to search in the countries of interest as well.

3. Registration

If your mark is cleared for use, the third step is to apply for registration.

The trademark registration system is entirely separate from the company name or the domain name registration systems.

Potentially expensive conflict can be avoided by registering your trademark. Another important benefit is that trademark registration covers the whole of New Zealand.

Simply using a trademark in New Zealand or overseas will not give you the same rights as a trademark registration. For the best protection, a registration is required in each country where you trade.

4. Maintenance

Here are some simple ways to maintain your valuable mark once it is registered:

* Use your trademark continuously to avoid it being removed due to non-use.

* If you allow another party to use your mark, ensure the correct mechanisms are in place to protect it.

* Use your trademark correctly to prevent it becoming generic.

* Use the trademark symbol to indicate that the trademark is registered. The symbol indicates the trademark is unregistered but that the trademark owner claims rights in the word or logo as a trademark.

* A trademark registration continues to exist as long as the renewal fee is paid every 10 years.

* More questions on branding and trademarks for small businesses can be directed to Marcus Woodhouse, associate, A J Park, Intellectual Property Lawyers, by phone: (09) 353-6639 or using the web links below.