Ensuring your trade mark is distinctive
What are trade marks and why are they important?
Your trade mark is your brand. It’s the way people remember you – think Tip Top, Kodak, McDonald’s – and is a very important business asset. A registered trade mark means the owner has exclusive right to use it and even license other parties to use it. And, anyone who uses the mark without the owner’s authority faces infringement proceedings
Why is it important to make sure your trade mark is ‘distinctive?’
It ensures the customer isn’t confused, secondly it provides a strong market presence and it also prevents discord with competitors. It’s interesting that these days we see a lot of ‘families’ of trade marks from the same company – e.g. fashion house Armani which has a wide range of trade marks – GIORGIO ARMANI, EMPORIO ARMANI, A/X ARMARNI EXCHANGE, ARMANI JEANS, MANI, ARMANI ALTA MODA. However, sometimes there are names that might appear similar but come from very different sources A good example is New Zealand fashion labels TRELISE COOPER and TAMSIN COOPER. Trelise recently threatened Tamsin with legal action for using her own name for her fashion label because it was considered too similar to her own TRELISE COOPER label. The issue was finally settled out of court and both labels now co-exist – and so they should, after all these labels are the designers’ own names. But it goes to show that not being distinctive in your choice of trade mark can be potentially detrimental, can be confusing for the public and possibly expensive.
So when is ‘similar’ ‘too similar’ in terms of choosing a trade mark?
Under the Trade Marks Act 2002, the Commissioner must not register a trade mark if it is identical or similar to an earlier registered trade mark and both will be used for the same goods or services.
There are many other factors that come into it, but a key consideration is that the trade mark is distinctive. A recent decision determined that the trade marks PURE and PURE BABY were NOT similar - although both were to be used for clothing.
So what’s the best approach to choosing a distinctive trade mark?
Be as original as possible if you want to avoid conflict and confusion and establish a strong and successful brand.
Consider avoiding using your company name, because legally a trade mark has to be distinctive and not descriptive, and also if you sell your company but want to continue your range, you may face difficulties.
What’s the difference then between a patent and a trade mark? What about copyright?
A patent provides legal protection for inventions – ensuring your product, or ‘intellectual property’ remains yours to use commercially. Patents can cover anything from articles and devices to methods of doing things such as making a plastic sheet or a method of killing weeds.
What about copyright?
Creativity requires protection too. And that is what a copyright does – it protects the creativity of the creator of many different types of work from artistic or written work to computer programmes or drawing. In New Zealand copyright there’s no need to register a copyright as it comes into force upon the creation of the work. It also gives the creator rights to allow others to use or copy their work.
By Elena Szentivanyi. An edited version of this article appeared in the Herald on Sunday on 19 October 2008.
