All Things Newz
Law \ Legal

What goods and services can my NZ trade mark registration cover? – Trademark



To print this article, all you need is to be registered or login on Mondaq.com.

Trade mark registrations are intellectual property rights you
can use to protect key aspects of your business. They act as a
“badge of origin” for customers, identifying your
business as the source of goods or services they purchase. This
article will explain what goods or services your trade mark
registration can protect in New Zealand.

What Does a Trade Mark Registration Protect?

A trade mark can be a sign that represents your business, such
as your business name, logo, or slogan, although less conventional
ones exist. These include commercial jingles, scents, or colours.
Your trade mark rights typically only extend to the goods you trade
in or services you offer.

A trade
mark registration
is a powerful intellectual property right
that you can use to protect your business’ interests. In
particular, it inhibits other traders from replicating or imitating
your trade mark for the same goods or services.

For instance, suppose your business produces and distributes
your own distinctive clothing products, using high-quality
materials to draw customers. In this case, you can incorporate your
trade mark in your branding and register it to protect your
business. You can also utilise the legal protections granted to you
by the Intellectual Property
Office of New Zealand
(IPONZ).

As a result, if another clothing business uses a similar trade
mark to yours on their goods, they may be infringing your
intellectual property rights. In addition, they may confuse
customers and draw them away from your business. This can not only
affect your customer base, but also potentially damage your
business’ reputation. However, with a registered trade mark,
you have
legal powers
available to enforce your trade mark rights and
stop this other party.

Trade Marks and How They Apply to Goods or Services

When you apply to register your trade mark with IPONZ), your
application must include specific information, such as the:

  • specific elements of your trade mark;

  • owner of your trade mark;

  • type of trade mark you wish to register; and

  • goods or services you want your trade mark registration to
    cover.

The scope of protection for your trade mark only extends to what
you apply to use it for. Therefore, your trade mark application
should specify what you wish to protect.

When assessing your trade mark application, IPONZ uses your
specification as a reference for assessing your trade
mark’s:

  • distinctiveness;

  • potentially misleading or confusing nature; and

  • similarity to existing trade marks for the same (or similar)
    goods or services.

Conversely, if someone uses a trade mark that is confusingly
similar to yours, but it applies to completely different goods or
services, you may not have a valid trade mark infringement
claim.

[content box] The logo trade mark for your clothing products may
apply to jackets, knitwear, and other specific clothing goods. So,
if someone else uses a similar logo for their plastic storage
products, your specifications likely do not overlap. Therefore,
your scope of protection may not extend to grant you rights to
pursue that other party.

What Goods and Services Can My Trade Mark Registration
Cover?

Ultimately, what you choose to protect as a part of your trade
mark specification is up to you. However, you should take due care
when completing this process. You must have an honest intention to
trade in the goods or services you specify. If your specification
is unreasonably broad, IPONZ will likely not approve it. On the
other hand, you do not want to make it too narrow, as you may miss
out on vital goods or services that you trade in.

Whatever terms you choose to describe your goods or services,
they must be clear enough that an ordinary person can understand
what your trade mark registration covers. Notably, IPONZ provides a

trade mark specification builder
on their website that details
pre-approved terms for goods and services. This tool can be useful
for building your specification.

Additionally, if you only use these pre-approved terms in your
trade mark application, you can get a discount on your application
fee, from the starting $100 down to $70 (excluding GST).

Classifying Your Goods or Services

Beyond specifying the goods or services you want your trade mark
registration to cover, you must also categorise them into their
respective classes. IPONZ uses the internationally recognised
Nice Classification System
to allow for more efficient
organisation of trade marks. There are 45 classes in total, with
classes 1 to 34 relating to goods and 35 to 45 relating to
services. Your trade mark fees will depend on the number of classes
you select.

Key Takeaways

When you apply to register your trade mark, you must specify
what goods or services you want it to cover. These determine your
scope of protection, and what areas you have appropriate trade mark
rights in.



Source link

Related posts

National Safe Work Month – Managing WHS risks and preventing harm – Health & Safety

CFPB Targets Garnishment Practices: Banks Need A Robust Compliance Plan – Financial Services

OFCCP Proposes Burdensome Changes To Its Compliance Review Scheduling Letter – Employee Rights/ Labour Relations