Angela Searle is a trademark attorney for Trade Mark Intelligence who works with both SMEs and global corporations
Your trademark is potentially one of your most valuable business assets – the ability to use it, unimpeded, is something many of us take for granted. Yet, if you have not registered your trade mark – your brand name, then you leave yourself wide open for someone else to swipe it from underneath you. In this article I will shed light on some of the myths and misconceptions that exist around trademarks.
I have heard that you get rights to a trade mark through use – so why should I go to the effort of registering a trademark?
Yes, you do get rights to a trademark through use, if you can demonstrate that you have built a reputation under that name or mark. The question is – what is a reputation? How far does it extend? And how can you prove it? It’s a subjective argument and one that will cost you a huge amount of money to fight if someone else comes in and uses or registers a mark the same or similar.
For example, you could be a Christchurch company trading for many years, servicing the local community – if a Dunedin company started to use or registered the same trademark, they probably can, as your reputation probably is not a strong one in other parts of South Island. If you have registered your name, then you have a certificate proving your nationwide exclusivity to that mark.
Does a trademark registration allow me to stop someone using a similar trademark – or just the identical mark?
The answer is based around whether a consumer would be deceived or confused by the same/similar mark. Similarity comes in two guises – in simple terms, the first is around the marks’ visual, phonetic and conceptual similarity. The other is around the goods or services to which the marks are applied.
If another trader used a phonetically similar mark, then you probably would be able to stop them.
I own a successful bakery in a small community. I am the only one in town and I trade under the name ‘The Bakery’. Can I trademark that name?
Every trademark must distinguish a service or product from those provided by other traders. Because the word bakery is a descriptive and generic term, so you cannot register it and prevent others using it. You also cannot register as a trademark a geographical location, common surnames or superlatives, such as beautiful, best or greatest.
For example, you could not register Whangarei Bakery, Smiths’ Bakery or The Freshest Bakery.
To uniquely distinguish your product or service from others, invented words can be used or standard words that have no relationship to the goods/services. So in the example of the bakery, by adding an invented word into the title – let’s say Breagal Bakery, or ordinary words such as Blue Skies Bakery, you would then have a distinctive mark to register.
I can register a trademark myself – why would I use a lawyer?
Do you file your own tax returns? Would you write your own will? Registering a mark is the same. Yes you can do it, but it’s a case of you don’t know what you don’t know. If you get it wrong, you might not know until someone challenges you or tries to steal your mark out from under you…they might even succeed!
Many self-filers also go wrong by defining their goods/services too narrowly therefore not allowing them scope to expand the breath of their goods or services being provided under their existing mark – or by filing an application to register a logo, whereas they would obtain much stronger protection if just the word mark was registered.
Registering your mark is like insurance – it protects your good name. The name you have worked hard to establish. A professional puts you in the strongest possible position, now and into the future.