Friday, June 3, 2011

Guest Post: DIY trade marks

Thanks to Corinne Blumsky for this article.

Doing it yourself is part of the kiwi psyche. Did you know you can protect your brand by filing a trade mark application yourself?  Sounds easy!  But there are some issues you need to be aware of before you go down that path.
Make sure your brand is available for you to use and register. Before you invest in developing a new brand, do a thorough search of what currently exists – the risk of not doing so can be very expensive.
Do a search of all the trade mark records and of the marketplace.  The aim is to determine what brands are already in use, applied for or registered.  You can then decide whether your new brand is too close to what is already.  Clearing a brand can be complex.  It requires time and lateral thinking.  It is also helpful to have a level of familiarity with the databases you are searching.

To do a search, you need to be clear about what your brand is (ie. all its various elements so you can search all of those) AND understand what your business does (ie. what products or services you provide).

Critical issue

When a new brand is created the most critical issue is ensuring that it is available for use and in particular will not contravene any existing third party rights in the same or a similar trade mark.

However, this is often where problems occur.  For example, one business had searched for the prefix of the brand they were interested in.  They found numerous trade marks beginning with the same prefix but somehow missed the exact trade mark!  That business went on to produce catalogues and labels based on their understanding that the trade mark had been cleared for their use. They only relaised they had a problem when they received a letter from a firm of solicitors pointing out that their use infringed another’s trade mark.  Not only did they have to re-label their goods, they also had to select a new (properly cleared) trade mark.

Another business searched the exact trade mark they were interested in.  They found the exact trade mark but in a different class to the class they knew their goods were classified in. Trade marks can be classified in 45 classes.  Classes 1 to 34 cover products; classes 35 to 45 cover services.  Again, they proceeded to use the trade mark until they also received a solicitors’ letter asking them to stop.  They were infringing the rights granted under the trade mark they had, in fact, found. What they had not considered was the similarity of the goods. You can infringe another’s trade mark even if you provide different goods or services that are in a different class – similarity can be enough.

So how do you try to avoid this happening? The criteria you select for each brand you search for will depend on a number of factors.   These include the nature of the trade mark, the presentation of the trade mark, the goods or services or both on which it will be used, as well as the country and database being searched.

A number of countries offer online trade mark databases.  The methodology for entering trade marks onto a database differs from database to database. You need to be familiar with this to have any chance of finding potentially relevant trade marks.

It is also important to note that trade mark rights are territorial in nature. If you intend to export goods from New Zealand, then you should also clear your trade mark for use in each of the countries where you will use your trade mark.

Too often a business that chooses to undertake their own trade mark clearance search often goes no further than entering the exact trade mark as the search criteria.  While on occasion you may locate an exact trade mark, it gives no clue as to whether there is a similar trade mark lurking on the database or is in use.   This is important to bear in mind as New Zealand, like a number of other countries, has infringement laws that extend to cover ‘similar’ trade marks.

Right approach

Take the right approach when filing your own trade mark applications.  Internet technology has made it possible for many trade marks offices around the world to provide filing facilities online.

With the introduction of online filing, there has been a worldwide trend of businesses filing their own trade mark applications. Objections are often raised by examiners during the examination process against a significant proportion of trade mark applications filed. These objections need to be responded to if the application is to progress.  The nature of objections raised range from typographical errors, to incorrect classifications of goods and services, the raising of similar trade marks already on the register, and registrability issues.  Often the business is not familiar with trade mark regulations, case law and the various practices of each country to be able to respond adequately.  Seeking specialist help at this stage can often be expensive and could quite likely have been avoided if engaged at the outset.

If you do need help, it is best to approach a qualified attorney.  While trade mark examiners can seem helpful, they are not qualified to give advice and in many cases are not authorised to do so. Unlike specialist attorneys, examiners are not familiar with the range of factors which need to be considered when registering a trade mark. By accepting suggestions offered by examiners, you may be unnecessarily limiting your rights.
Too often, applications are filed with some or all of the following issues.
  • The goods or services are too narrowly defined
  • The goods or services are wrongly classified
  • The trade mark to be registered includes non-essential features
  • The owner is not correctly identified.
Unfortunately, the limitations of a trade mark registration might not be exposed until the business wishes to rely on the registration to prevent a third party from using either the same or a similar trade mark. It is too late at this stage to learn that a registration does not cover the goods or services intended.  Also, the limitation of a trade mark is unlikely to come to light until international registrations are sought relying on the first filed application.  Again, it can be too late to take remedial action at this stage.

While it may appear straightforward to file an application online, you must know what you are doing in order to achieve the best possible trade mark protection available. You may be tempted to give it go, but you need to be aware that there could be risks with doing so.

Trade mark renewal

Once a trade mark is registered, you need to renew it every 10 years to keep it current.  You can do this online in New Zealand and in a number of other countries.  Some countries also require you to file evidence that you are using your trade mark in order to keep it.

Meeting renewal dates and managing evidence requirements needs processes and systems—especially if you have more than one brand in your portfolio.  A lot can happen in 10 years, such as a move of location, which could mean that you miss the renewal reminders.

In summary, DIY trade mark registration and renewal is available to all businesses. However, if you are not familiar with the process, law and practices it may be safer to seek specialist advice at the outset.

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