Who we are We re a boutique corporate / commercial law firm that - - PowerPoint PPT Presentation

Who we are

• We’re a boutique corporate / commercial

law firm that specializes in tech, media and IP

• Our clients vary in size – vendors and

customers

• We advise clients on:
• IP creation, ownership, registration and

enforcement

• General consumer law

Trade Marks 101

• A little bit of history
• “Unique identifier” often referred to as a

“brand” or “logo”

• Distinguishes products from a competitor

product

• Helps create brand association
• E.g. origin, quality, status

Examples

• Word - e.g. ALL BLACKS, MCDELIVERY
• Device - e.g.
• Shape - e.g.
• Colour – e.g.

for “block chocolate”

Registration

• Does not need to be registered but

registration has benefits

if registered; If unregistered

• Registration
• Territorial – country specific, in NZ we have the

Trade Marks Act 2002

• Class based – 45 classes
• Duration is infinite, if the trade mark is used and

fees are paid

• To be capable of registration:
• Must be a trade mark – capable of distinguishing
• Must be distinctive – not descriptive

Benefits of registration

• Exclusive right to use your trade mark in

NZ (or other territory) to promote your goods

• What is your brand?
• trading name
• business name
• domain name
• app name
• doesn’t need to match company name
• Easier to find on the Internet
• Helps to ensure that you will not infringe

Benefits of registration

• Deter / prevent others from trying to imitate

your brand or benefit from its success

• Helps to ensure that use will not infringe
• IP offices undertake a similarity search
• Defence to infringement
• Allows third parties the chance to object
• Helps to ensure that you will not infringe

Off-shore registration

• 2 routes to registration
• National
• International registration / WIPO / Madrid
• National
• Local agents (“free” advice)
• More $
• Often quicker
• International
• No local agents
• Potentially less $
• Slower

Where to register?

• Services
• Online service platform – global customer base?

Available where?

• Local customers / service provider?
• Goods
• Sale
• Manufacture (applying mark?)
• Local distributor?

Where to register?

• Where matters to you?
• Commercial importance
• Future market
• Competitor / reserve the “space”
• Where would you take action?

Why register?

• Ability to use
• Was brand cleared?
• Early indication of infringement risk
• Gives you ownership / control in that

territory

• Allows change in local operator
• Prevent brand jacking
• Creates a more concrete offering for business sale

Why register?

• Custom notices
• inward
• outward
• Distributor / sales agent
• Online selling platform
• Social media
• Regulatory process
• Domain name?

Who should register?

• You (NZ entity)
• Your local wholly owned entity
• Not your local distributor or agent