Finding the golden egg

Article  \  13 Mar 2014

Many New Zealand businesses recognise the value in protecting their brands by registering trade marks. Once on the register, trade mark information can be searched, including information on overseas databases. The information gained can then be linked to other commercial information on that brand to gain an overview of your competitor's business strategy.

Trade mark records

Here are seven reasons why you'll want to make time to conduct research using the trade marks register:

  1. You can identify trade marks owned by your competitors and learn about the goods or services covered. Any moves by your competitors to protect brands for different goods or services can provide early insights into possible product or service diversification, or possible partnering or development opportunities (such as franchising the business). If a competitor suddenly abandons a trade mark application, this may signal a plan to divest itself of a particular product or service.
  2. Knowing what trade marks your competitors own can help you when selecting a new trade mark for your business. If the trade marks are identical or too similar, this not only defeats the purpose of having a trade mark, but may cause confusion for your consumers. Worse, if you adopt a similar trade mark you face the prospect of being sued. Defending an infringement action or undertaking rebranding because of proceedings is expensive and will distract you from running your own business.
  3. You can find out if another business has filed an application to register the same or similar brands to yours for similar business activities. The early discovery of this information will enable you to plan how best to handle the situation and allow you to seek early advice on your options.
  4. You can identify emerging technologies and trends. If an international competitor has applied to register a trade mark in New Zealand, you may be able to steal a march on your local competitors by analysing whether the technology or trend around those particular goods or services has an application in New Zealand. A possible consideration is whether you can gain the sole rights to licence the technology for the New Zealand market.
  5. It can provide insights into complex ownership and business relationships. Trade marks can be held by various entities including individuals, partnerships, trusts, companies. It's common for trade marks to be owned by a brand holding company and licensed for use to another business. Looking at the data can help you understand intricate relationship structures.
  6. You can keep a regular watch on your competitors and gain early information on the possible sale or merger of their business. Changes in ownership of a trade mark should be recorded so the register is accurate and up-to-date. It's not uncommon for deals to be negotiated and documents signed and recorded against the trade marks register before news of the sale or merger hits the media.
  7. You can learn about new players entering your market by searching for all applications filed in a particular class, for example the class that covers alcoholic drinks or non-alcoholic drinks - or the class that covers furniture. If, as a food manufacturer or retailer, you had been searching the food classes regularly, you would have noticed when the company Aldi started filing applications in New Zealand to protect its brands. While this business has not yet entered New Zealand, the sheer number of applications filed signals a clear plan to do so in the future.

Find the golden egg

Trade mark databases provide a wealth of information for you to analyse to your advantage. Be focused and seek critical information that will keep you ahead of your competitors, alert you to possible changes, and help you in your decisions to buy or divest yourself of other businesses. This will likely involve developing a brand strategy not only to protect your own brands but also to put into practice procedures to decide who, what, when and where to search.

It's possible to spend a lot of money conducting searches for little return. The key is to ask the right questions and have in mind the golden egg you seek to find.

An edited version of this article appeared in the March 2014 issue of NZ Retail.