KEY POINTS:
Elena Szentivanyi, a patent attorney with Henry Hughes, advises on
ensuring your trademark is distinctive.
What are trademarks and why are they important?
Your trademark is your brand. It's the way people remember you - think Tip Top, Kodak, McDonald's - and is an important business asset.
A registered trademark means the owner has the exclusive right to use it and even license others to use it. Anyone who uses the mark without the owner's authority faces infringement proceedings.
Why is it important to make sure your trademark is distinctive?
It ensures the customer isn't confused, provides a strong market presence and prevents discord with competitors. These days we see a lot of "families" of trademarks from the same company.
An example is fashion house Armani, whose trademarks include Giorgio Armani, Emporio Armani, A/X Armani Exchange and Mani. Sometimes names might appear similar but come from different sources.
An example is New Zealand fashion labels Trelise Cooper and Tamsin Cooper. Trelise threatened Tamsin with legal action for using her own name for her label because it was considered too similar to her Trelise Cooper label.
The issue was settled out of court and both labels now co-exist - the labels are the designers' own names. But it shows not being distinctive in your choice of trademark can be potentially detrimental.
So when is similar too similar in terms of choosing a trademark?
Under the Trade Marks Act 2002, the Commissioner must not register a trademark if it is identical or similar to an earlier registered trademark and both will be used for the same goods or services.
There are many other factors that come into it but a key consideration is the trademark is distinctive. A recent decision determined that the trademarks Pure and Pure Baby were not similar - although both were to be used for clothing.
So what's the best approach to choosing a distinctive trademark?
Be as original as possible if you want to avoid conflict and confusion and establish a strong and successful brand. Consider avoiding using your company name, because legally a trademark has to be distinctive and not descriptive, and also if you sell your company but want to continue your range, you may face difficulties.
What's the difference then between a patent and a trademark? What about copyright?
A patent provides legal protection for inventions - ensuring your product or intellectual property remains yours to use commercially. Copyright protects the creativity of the creator of work from artistic or written work to computer programmes or drawing.
In New Zealand copyright law there's no need to register a copyright because it comes into force on the creation of the work.
