Why I need the protection of a REGISTERED trade mark…
Trade marks are symbols/words that distinguish a product/service in the market place.
A common misnomer is the widely held belief that incorporation of a business name will provide a satisfactory level of brand protection. The fact is, legal precedents suggest incorporation of a business name provides virtually no protection or exclusivity at all…. Registration of a Trade Mark™ however, provides the owner a Statutory Monopoly for the marks exclusive usage in the class (es) it is registered in…
The owner of a registered trade mark can more readily sue for infringement when someone else uses the same or similar mark, rather than relying on more costly proceedings pursuant to the Fair Trading Act, or the common law tort of passing off.
A registered TM provides the highest order of brand protection: i.e. a domain name or simple incorporated company name would not serve as a defence against a Trade Mark action. And the presentation of a Certificate of Trade Mark Registration will generally, motivate an ISP/Telco or media/platform owner to act in favour of the TM owner when a possible infringement is cited. Thus, the more common forms of infringement can be satisfactorily resolved without the need for costly legal/court costs, which you could also be faced with should another party register your trade mark before you do…
Further, a registered TM also prevents many forms of online ambush via search diversion of potential custom from directly accessing your website. It is for this reason that many icons such as Mick Jagger and Kate Moss have recently secured TM registration for their own names in several classes; and, why local iconic brands such as Danske Mobler and Walker & Hall through to the country’s oldest newspaper the Otago Daily Times have secured TM registration with DPL’s Filing Service…
In some business sectors it is also prudent to trade mark certain descriptive elements of functionality that can also provide a distinctive marketing edge: i.e. The Warehouse is registered as: The Warehouse where everyone gets a bargain.
A registered trade mark is considered a must have in these days of digital convergence – when an unregistered brand/mark can more easily be ambushed online…
And, if you are desirous of selling your business/brand a tick in the registered TM /IP box is now very often a pre-condition to sale; and, can leverage a better price in many instances….
