Introduction to trade marks for craft brewers in New Zealand
What is a trade mark?
A trade mark is any sign that can distinguish the goods and services of one business from those of another. Trade marks include:
- slogans (e.g. YEAH RIGHT!, IT JUST TASTES BIGGER)
- distinctive colours (e.g. Frucor has registered the colour green that is used on its V energy drinks)
- product and packaging shapes (distinctive bottle shapes (e.g. the Coca-Cola bottle) can be registered if they have been used for some time and now function as a trade mark)
So what makes a good trade mark?
Not all trade marks are created equal. Some trade marks are stronger than others. Below are a few examples of beer trade marks ranked strongest to weakest:
1. Invented (e.g. ZEELANDT, RANGA, PARROTDOG)
2. Arbitrary (e.g. TUI, SUMMIT, ELEPHANT, COMET)
3. Suggestive (e.g. THE TWISTED HOP, YEASTIE BOYS, FIRST HARVEST, GREAT WHITE)
4. Descriptive (e.g. LITE ALE, SOUTH COAST BEER, LOW CARB)
5. Generic (e.g. LAGER, INDIA PALE ALE, ALE, SHANDY)
Stronger trade marks are easier to register as trade marks and enforce against other parties.
What should I do before choosing a new trade mark?
Try to think of a number of different strong trade marks, as sometimes your first choice won’t be available. Rank them in order of preference and then you need to systematically check each trade mark to make sure it will not infringe any registered or unregistered trade marks that already exist. The consequences of not checking whether your trade mark is available for use before starting to use it can be serious. You could be sued for trade mark infringement, be forced to stop using the trade mark and be forced to pay damages and costs.
While a search is not only critical, it is also fairly complicated and should be conducted by a trade mark specialist. The specialist’s search will cover identical trade mark applications and registrations as well as any confusingly similar trade mark applications and registrations that could prevent you from using and registering your trade mark.
In some countries such as New Zealand, it is also possible to acquire rights in a trade mark through use. You should also carry out your own searches of the market place and the internet to help ensure that there are no unregistered trade marks in use by other brewers which may prevent you from using and registering your new trade mark.
How do I protect my trade mark?
You need to obtain trade mark registration.
Why register a trade mark?
There are a number of significant advantages in registering your trade marks including:
- the exclusive right to use your trade mark in relation to beer throughout New Zealand (i.e. your right extends throughout New Zealand, not just the local area that you may sell in at present).
- the ability to prevent the use or registration of the same or any confusingly similar trade mark for beer or similar goods or services anywhere in New Zealand
- the prevention of infringement of your trade mark is easier, less time consuming and less costly in cases where you own a registered trade mark compared with having to enforce your unregistered rights.
Can all trade marks be registered?
No. A trade mark cannot be registered if it is not capable of distinguishing your goods or services from the same or similar goods or services of other businesses in the market place.
In general trade marks that cannot be registered include:
- those that conflict with an earlier registered trade mark (e.g. TUI is already registered so you won’t be able to use or register a mark identical or similar to TUI. Likewise, CRAFTY BEGGERS is registered so you won’t be able to use a confusingly similar mark such as CRAFT BEGGER).
- descriptive words (e.g. “DELICIOUS ALE” for a beer)
- laudatory words (e.g. “BEST” or “AMAZING” or “AWESOME”)
- common surnames (e.g. SMITH’S LAGER)
- common geographical names (e.g. AUCKLAND IPA)
- deceptive names (e.g. HONEY BEER, when the beer doesn’t include honey)
How long is the trade mark registration process?
The period from application to registration varies from country to country. In New Zealand it takes approximately 6-9 months assuming there are no major objections or oppositions.How do you register a trade mark?
In New Zealand, there are generally four stages which are outlined below.
- Search before filing – it is important to conduct a search before filing any application to ensure the trade mark is available for use and registration.
- Application – after filing the application, the Intellectual Property Office of New Zealand (IPONZ) will examine the application to ensure it complies with all relevant legal requirements. If IPONZ raises any objection to the application, it is possible to file arguments to persuade IPONZ to withdraw their objection. If the application is accepted, it will be published for opposition purposes.
- Publication – once the trade mark has been accepted for registration, it will be published in the Patent Office Journal. Following publication, there is a three month opposition period. Within that period, anyone, including your competitors, can lodge an opposition to your trade mark application. If no opposition is filed, the trade mark will be registered.
- Registration – once the three month opposition has expired and assuming no opposition is filed, a Certificate of Registration will be issued. The registration of your trade mark will be backdated to the date your application was filed which means your rights take effect from the filing date of the application.
How long does a trade mark registration last?
A trade mark registration lasts for 10 years from the date of the application and can be renewed indefinitely for further periods of 10 years.What’s the difference between ™ and ®?
You can use the ™ symbol to show that the trade mark referred to functions as a trade mark, but is not necessarily registered.
You can use the ® symbol to show that the trade mark referred to is a registered trade mark. It is an offence in many countries, including New Zealand, to represent a trade mark as registered when it is not.Does trade mark registration in New Zealand protect my rights in other countries?
No. A New Zealand trade mark registration only covers New Zealand. If you use your trade mark in other countries, you need to obtain registration in those countries. An application for registration in other countries can be based on a New Zealand trade mark application. Provided the application is filed within six months after filing the New Zealand application, those overseas applications will be deemed to have been filed on the same date as the New Zealand application.Does registering a company name also mean that my trade mark is protected?
No. Company law is different from trade mark law. You cannot stop someone from using a trade mark when it is the same as or similar to yours merely by registering your company name.
Can I register my domain name as a trade mark?
Domain names are registered on a first come first served basis and take no account of trade marks that already exist.
If you can register your domain name as a trade mark, you should do so as soon as possible. Similarly, if you have a trade mark, it is worth registering it as a domain name if possible.
If I get a trade mark registration, can I license or sell it?
Yes. A registered trade mark is a right which can be licensed or bought and sold just like any other property.
What is the term of a trade mark?
Trade marks are registered for a term of 10 years and can be renewed for subsequent 10 year periods.
Can a trade mark be renewed after it has expired?
Trade marks can be restored and renewed within 12 months from the date of expiration. No evidence is required for a restoration application.