Why register your trade mark

It is possible to enforce your unregistered rights in a trade mark against a third party using the same or a confusingly similar trade mark on the same or similar goods or services.  However, it is very much easier to enforce your rights if your trade mark is registered.

  • It can take a number of years to build up enough reputation to prove enough awareness of your unregistered trade mark to successfully use it as a basis for legal action;
  • Proving use of a trade mark is a much more time consuming and costlier exercise than relying on a trade mark registration;
  • If your use was on a geographically limited scale, the usefulness of the rights built up is limited to that geographical area;
  • If your trade mark is on the trade marks register third parties are more likely to become aware of it when they choose and register their own trade marks. Your registration will also show up during examination of other trade mark applications, and this should prevent any confusingly similar trade marks from being registered.

If you want to export or manufacture your products overseas, then in many cases you will need a registration for your trade mark in those jurisdictions.  In many of New Zealand’s major trading partners rights in a trade mark are given to whoever applies to register the mark first, not who uses the mark first.

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