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Protecting Your Identity

by fatweb

Angela-Searle (1)

Angela Searle is a trademark attorney for Trade Mark Intelligence who works with both SMEs and global corporations. She can be reached at angela@tmintelligence.co.nz

Your trademark is potentially one of your most valuable business assets. Your ability to use it, unimpeded, is something many of us take for granted. Come December, the Madrid Protocol is anticipated to come into effect in New Zealand and while this provides a simple, economic and flexible means to register your trademark overseas, it also means your mark is under more potential threat than ever before.

While working in Australia, I became familiar with the operation of the Madrid Protocol, so here are some insights on what it means for New Zealand businesses.

What is the Madrid Protocol? 

It is an international system, which allows businesses to file a single international trademark application and designate multiple countries in one application. This makes the process more streamlined and saves time and money. There are currently 87 countries which are party to the Protocol, which include some of New Zealand’s major trading partners such as Australia, US, Europe, China and Japan.

The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to renew the registration and to record subsequent changes in ownership, or in the name or address of the holder (rather than recording each change for each individual registration).  

Why it is important that I ensure my trademark is protected? 

While the system will make it easier to file in multiple countries, it also makes it more accessible for overseas entities to file here – thus increasing the risk of someone else registering your mark (if you have not done so), meaning that there may be competing rights to your mark.  

This could, for example, mean that you are unable to expand your business into geographical areas in which you are not currently trading.

It is expected that trademark applications and objections by foreign companies are likely to increase, so before this comes into effect, it is important to consider the importance to your business of having adequate protection of your trademarks.

If you do business overseas or have goods manufactured offshore, protecting your right to use your name on the international playing field has never been more important.

If you have not registered your trademark – your brand name, then you leave yourself wide open for someone else to swipe it from underneath you.

I can register a trademark myself – why would I use an attorney?

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! 

The Protocol, while simplifying the process, brings added complexity to getting the right protection in the right countries. Effective searches become even more important, and for someone not used to doing them, they can be difficult.

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.  

An attorney will also have more success at overturning any objections that are raised during the registration process – and objections are commonplace.

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.

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