Hot Gossip > Protecting your Brand
There is a lot of misunderstanding surrounding the topic of copyright. Stories like "if you change something 10% it will be OK" or "if it is on a website it is OK to use" have been floating around for some time.
Certainly the growth of web applications like Google's image search have lead to some misconceptions about copyright - just because you can view or search for it on the web, doesn't mean it isn't subject to copyright or other more stringent forms of protection.
After all, the web is a means of publishing just as a book is. Books are subject to copyright in the same manner as original works published on the web.
Key terms defined:
- Copyright ©
All original creative works (written or pictorial) are automatically subject to copyright. You don't need to apply to any particular organisation to have your work protected.
- Trademark ™
A trademark is another word for your logo or brand. Any logo/ brand or trademark can use the TM symbol, it does not have to be registered.
- Registered Trademark ®
Only those trademarks that have been registered with the Intellectual Property Office can carry this symbol in New Zealand.
If you think there might be the slightest possibility that you will need to protect your logo/trademark/brand then it is important you check this out in the early stages of your brand development. Engaging the services of an IP expert can save you a lot of heartache and cost long term. There is no point spending time and money developing a brand to find that you can't use it.
IP solicitor Dan Winfield of A J Park explains...
A brand you cannot use is not worth much. Worse, a brand you find you cannot use after you have launched your product will cost you money.
If you are going to invest in a new brand you should make sure it is free for you to use in your market, be it here or overseas. A marketplace search is a good start. If someone else has invested in the same brand or a similar brand to yours then the chances are they will not take kindly to your new venture. Knowing what brands others are using in your market (and related markets) enables you to assess any risks involved in adopting your new mark.
But to clear a mark for use you need to search the trade mark register as well as the marketplace. Think of the trade mark register as the part of the iceberg under the surface.
The trade marks register is the big part of the iceberg
The marketplace is the top of the iceberg, the bit you see above the water. The trade marks register is the big part of the iceberg under the water.
Let’s pretend that we have a new bottled water brand. A marketplace search will identify the twenty or so bottled water brands on the New Zealand market. But a search of the trade mark register tells us there are 2862 trade mark registrations covering ‘water’. That’s a lot of iceberg not to have considered before you launch.
The trade mark register is the part of the iceberg under the surface
The owner of a trade mark registration will not always need to have used its mark to have rights in it. This means that your marketplace search will not locate many of these earlier registered rights.
Trade mark registrations are the part of the iceberg that sinks ships
Trade mark registrations are also the part of the iceberg that will sink your ship. This is because it is far less expensive for the owner of a trade mark registration to enforce its rights than it is for the owner of an unregistered trade mark. Less expensive to enforce usually equals more likely to enforce.
Clearing your brand for use
We clear brands for use on a daily basis. We search the marketplace and trade marks register and take into account similar marks covering similar or identical products.
What we find is that people often concentrate on the brands used for the product they intend to sell. Infringement of earlier rights (registered or unregistered) is not that black and white. For example, if you use the brand WAHOO for a bottled water brand, the owner of the same or a similar brand for a soft drink may have a valid complaint. The public are likely to associate the two drinks and think that they come from the same producer when they don’t.
What marks are too similar will vary depending on the marks being compared and the products involved. For example, the New Zealand court has held that the mark STEINEKER is too similar to co-exist with HEINEKEN for beer because bar staff could be confused between the sound of the two marks in a noisy bar. But the court found that the marks LANCIA and LANCER can co-exist for cars. You take care buying a car – you are not going to buy the wrong car simply because these marks sound similar.
In summary, to clear your mark for use we need to look at what others are doing in your market and broadly about what might or might not be a problem.
Thanks Dan, intriguing if not a little confusing, but it really does highlight the need for expert intellectual property advise in the initial stages of developing a brand.
Dan Winfield can be contacted through the Wellington office of A J Park:
E: Dan.Winfield@ajpark.com
D: +64 4 498 3463
F: +64 4 472 3358
Website: www.ajpark.com
Tip: Copyright on your website
The copyright date on your website should correspond to the date the information on your site was created. This does not necessarily correspond to the current year, and shouldn't be used as a measure of how 'up to date' the site is.
Article By Wendy Riley- Biddle, Director and Principal Designer
Hot Pyjama Productions Ltd
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