What trade mark to file for?

To be registerable, you trade mark needs to be:

• distinctive, meaning it is not descriptive or something others in your industry have a need to use; and
• different to other trade marks.

Distinctiveness

Trade marks need to be “distinctive” to be registered.  This means something that it is not descriptive of your goods or services and that is not something that is commonly used in your industry or that others would likely think of to use in connection with goods and service like yours.

For example, brands like "LEGAL SERVICES NZ" and "ELITE GARDENING" are not registrable as trade marks because they are descriptive of the services provided. Other traders are likely to want to use the same or similar phrases to describe their own services, and the Trade Marks Office will not grant you exclusive rights to use those phrases for this reason.

Other examples of wording that is not registrable as a trade mark include "NUMBER ONE", "OJ" for orange juice, "BYO" for restaurant services, and "e-COMMERCE" for business services. Again, other traders are likely to want to use the same or similar phrases to describe their own goods or services and this is a ground for rejection.

It is best to choose a brand that does not directly describe your goods or services and that is easily recognisable by consumers and distinguishable from other providers.

Examples of brands that are sufficiently distinctive are Nike (apparently the name originates from the Greek goddess of victory and otherwise Nike was not and is not descriptive of clothing or footwear), Apple (apparently the name is inspired from one of Steve Jobs' fruitarian diets and otherwise Apple was not and is not descriptive of computer related goods and services), and Google (apparently the name originates from a misspelling of "Googol" (number one followed by one hundred zeros, which was apparently chosen to signify that the search engine was intended to provide large quantities of information, and otherwise Google was not and is not descriptive of search engine related services).

Companies like Nike, Apple and Google all had to educate consumers about their brands to create a reputation and a connection in consumers' minds with the goods and services they provide. That is the challenge. However, once a brand's reputation is gained, it is a lot easier to protect and enforce that reputation than it is with a descriptive brand.  There will always be a level of confusion expected if you adopt a brand that is descriptive and similar to another, descriptive brand (for example, SUPER CARWASHING SERVICES and SUPERIOR CARWASHING SERVICES). Consumers may to confuse those two brands. Adopting and registering a more distinctive brand can help to avoid confusion of this kind and is easier to enforce against other traders looking to leverage off your reputation.

Words vs logo

When choosing between registering your business / brand name or logo as a trade mark, it is generally better to register your business / brand name as words, like LOFT LEGAL.  This gives broad protection to the words and similar words, including stylised versions of the words. 

But if your business / brand name is not sufficiently distinctive (see above) you could file a trade mark application for your logo.  This is generally not as good as protecting the words and won’t necessary give you exclusive rights to the words alone (which is what a trade mark registration for the words alone gives you).  But if you cannot get protection for the words, a registration for the logo (assuming that is sufficiently distinctive) would at least provide you with some form of protection and is certainly better than nothing. 

Either way, MARKY suggests filing for your logo as well as your business / brand name.  Generally speaking, the more trade mark registrations you have in your tool box the more you have to work with if issues arise, and each trade mark “tool” works in different ways.

You can register trade marks other than words and logos, like shapes and packaging designs.  These kinds of trade marks require a little more thought, and we suggest working with our legal partner, LOFT LEGAL, for these kinds of trade marks.

Other trade marks

If someone has already registered a trade mark that is the same or similar to yours, for the same or similar goods or services, then you trade mark may not be registrable.

There may also be other similar trade marks out there already used by others, which could be an issue.

Prior to filing a trade mark application or commencing use of your brand, we recommend doing searches to help to identify any existing trade marks that may be similar to the brand you want to use.  An existing trade mark (registered or unregistered) that is similar to your proposed trade mark may affect the right to register and/or use the trade mark. 

MARKY can facilitate this through the process if you would like to do this.

At the very least you should satisfy yourself with your own searches, including of:

• the Trade Marks Register;
• ONECheck; and
• other online resources, like general searches of the internet.

For searches of the Trade Marks Register you can do a “Trade Mark Check” or “Trade Mark Case Search”.  Both tools can be found here, with an explanation.

Be aware that the “Trade Mark Check” usually shows lots of trade marks, including those that might have goods or services that do not conflict with yours and so might not be an issue.

With the “Trade Mark Case Search” you can limit to relevant goods and services, and you can also search for different spellings or variations that might be similar.  This is more complicated than the “Trade Mark Check” but more refined and useful if you can get it right.  Information about this is provided in the link above.

The ONECheck tool will tell you if you proposed trade mark is available as a business name (compared with other company name registrations in NZ), web domain (.co.nz., .nz and .com) and social media username (for Instagram, Facebook and YouTube). 

It also checks the “originality” of your proposed trade mark using the  “Trade Mark Check” mentioned above. But bear in mind it does not know what your goods or services are and this is not a very accurate assessment in isolation.

If this is looking all too hard (you are not alone), MARKY will be happy to sort it for you.

Trade mark registrability