The recent furore about use of the word JANDALS ® by Lastseason.co.nz highlights the need to do prudent checks before adopting a brand.
Not all brands are available to adopt.
You might think the word is common and available for all to use - but this is no defence if you adopt a brand another party has already registered and uses, and they sue you for infringement.
Brand owners who invest in protecting their brands are not going to easily allow others to ride on their coat-tails. They will take whatever steps they consider reasonable to protect their investments. Therefore before you invest in developing a new brand, do a thorough search of what currently exists - the risk of not doing so can be expensive.
Selecting a brand for your business gives you the opportunity to be creative and unique - so instead of choosing a common word as your brand, think outside the box and create something new.
Do a search of all the trade mark records and of the marketplace. The aim is to find out what brands are already in use, applied for, or registered. You can then decide whether your new brand is too close to what is already registered. Clearing a brand can be complex. It needs time and lateral thinking. It is also helpful to have a level of familiarity with the databases you are searching. Specialist assistance should be sought for searching.
To do a search, you need to be clear about what your brand is. Consider all of its various elements so each element can be searched. Also understand what your business does (that is, what products or services you provide) not just now but intend to offer in the future.
However, searching is often where problems occur, particularly if the approach is DIY.
For example, one business had searched for the prefix of the brand they were interested in. They found many trade marks beginning with the same prefix but somehow missed the exact trade mark! That business went on to produce catalogues and labels based on their understanding the trade mark had been cleared for their use. They only realised they had a problem when they received a letter from a firm of solicitors pointing out that their use infringed another's trade mark. Not only did they have to re-label their goods, they also had to select a new (properly cleared) trade mark, and pay legal costs.
Another business searched the exact trade mark they were interested in. They found the exact trade mark but in a different class to the class in which they knew their goods were classified. Trade marks are classified in 45 classes; classes 1-34 cover products, and class 35-45 cover services. Again, they proceeded to use the trade mark until they also received a solicitors' letter asking them to stop. They were infringing the rights granted under the trade mark they had, in fact, found. What they had not considered was the likeness of the goods. You can infringe another's trade mark even if you provide different goods or services that are in a different class - similarity can be enough.
So, how do you try to avoid this happening? The criteria selected for each brand you search for will depend on several factors. These include the nature of the trade mark, the presentation of the trade mark, its meaning, the goods or services or both on which it will be used, as well as the country and database being searched.
It is also important to note that trade mark rights are territorial in nature. If you intend to export goods from New Zealand, then you should also clear your trade mark for use in each of the countries where you will use your trade mark.
Too often a business that chooses to undertake its own trade mark clearance search often goes no further than entering the exact trade mark as the search criteria. While on occasion you may find an exact trade mark, it gives no clue about whether there is a similar trade mark lurking on the database or is in use. This is important to bear in mind as New Zealand, like many other countries, has infringement laws that extend to cover 'similar' trade marks.
The moral of the story is don't assume anything - check, check, and check again.
An edited version of this column appeared in the February 2014 issue of Apparel Magazine.