They stole my brand!

02 September 2010
Here's a marketer's guide to the wonderous world of trade mark law.

Trade mark law isn’t a particularly sexy topic. And it’s probably not something you want to spend a lot of time on. So here’s a quick reference guide that you can to tear out, keep in your drawer and pull out if someone starts asking questions.


1. You can own anything

You can (pretty much) own anything that consumers use to identify one person's product from another.

New name? Yes. New slogan? Yes. Colour? Yes. You can even own the shape of a product, a picture, a jingle, a smell. But this means that…


2. Someone might already own it

That's the rub. You should check (or recommend to your client that they check) that you can use your new name, slogan, colour, shape, picture.


3. Where to check if someone already owns it

Check the marketplace and the trade marks register. If it’s a shape of a product it would pay to check the design register too.

Often it’s not enough to just check the marketplace. To give you an example, there are around 20 bottled water brands in the market, but there are over 1,000 brands registered on the trade marks register covering "water". That's not to mention the other thousands covering similar products like "soft drink" that you should check too.


4. How do you know if what you find is a problem?

Because you ask a lawyer. That's not a plug.  I just can't see why you would want to take on the liability if you get the answer wrong.

If you find a brand that looks, sounds or is conceptually the same or similar to yours in your market then the best option is to choose another brand. If you don’t then at best there will be some confusion with the existing brand that will be an ongoing pain. At worse, the owner of the brand will sue you and get an injunction stopping you from using your brand.  This means you’ll probably have to recall what's already out there bearing the brand, pay damages and costs and then re-brand.


5. How do you best position yourself to stop others using your brand or something similar?

You register your brand as a trade mark. Why? Because:

  • registration gives you the exclusive right to use your brand anywhere in New Zealand (with a few riders)
  • you can prove your registered trade mark has been infringed if consumers 'wonder' if the other brand was the same or associated with yours
  • you do not even need to be using your registered trade mark (for three years) to keep your exclusivity over it
  • you can lodge your trade mark registration with Customs (along with a bond) and they will stop goods bearing the brand from entering New Zealand
  • you can’t infringe a trade mark registration when using another registered trade mark.

6. How do you know if your brand is registrable as a trade mark?

The more distinctive your brand the more likely you can register it as a trade mark (and get the benefits outlined above).

To qualify for registration a brand either needs to something consumers will immediately recognise as a brand or something that consumers have come to recognise as your brand. Invented words and logos are usually immediately recognisable as brands—colours and the shape of a product usually are not.

The brand also cannot be confusingly similar to any existing registered trade mark (unless the owner of that mark says it’s ok) and owners of unregistered trade marks can still object to registration.

An edited version of this article was published in Marketing Magazine, September/October 2010

  • IPNews