Trade marks

A trade mark is a word or words, logo, picture, signature, letters, numeral, colour, shape, smell, sound, or taste, or combination of any of these, which serves to distinguish one person’s or company’s goods or services from another person’s or company’s goods or services.

In New Zealand, both registered and unregistered trade marks are protected:

Unregistered trade marks are protected under common law and under the Fair Trading Act.  Rights in an unregistered trade mark are gained by use: the longer and more widely you use the mark in New Zealand, the greater the goodwill you build up in the trade mark, and the stronger your rights.

To enforce an unregistered trade mark, you bring a “passing-off” action and/or action under the Fair Trading Act to restrain someone else from passing-off their goods or services as yours.  However, to succeed in a passing-off action, it is necessary to show that you have created a recognizable reputation in your unregistered trade mark, and this is not always easy to do.

Registered trade marks are protected by filing an application with IPONZ.  IPONZ then examines the application, and if all criteria are met, will register the mark after giving the general public an opportunity to oppose the application.

Your registered mark will appear on the New Zealand trade marks register and gives you rights in your trade mark nationwide for the goods and/or services for which it is registered.

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