If you have not protected your trade mark by obtaining a trade mark registration, it will come as a huge shock if someone else registers the same trade mark for the same goods or services as yours and then objects to your use.
What can you do in this situation?
To make matters worse for businesses with trade marks they use but haven’t registered, they can expect to see an increase in the number of foreign trade mark owners registering trade marks in New Zealand, due to the introduction in December 2012 of an International registration system (“the Madrid Protocol”) in New Zealand. This will undoubtedly lead to more disputes between parties over ownership of trade marks.
If use is made of a trade mark that is registered by another party, that use is trade mark infringement at first appearance. New Zealand law does provide defence options. However, in most cases these require a proactive step. These options include:
- If a trade mark is used continuously, for longer than the other party has used and from before the other party’s application, a defence to trade mark infringement based on Continuous Use may be available.
- Your own registration can also provide a defence to infringement. One way of obtaining registration would be to establish Honest Concurrent Use with the other party’s trade mark. Important factors include the extent of your use, whether any instances of confusion between the marks have occurred and the honesty of your adoption and use of the mark.
- Negotiating with the other side to achieve a Co-existence agreement may be an option. This could include provision of Consent by the other party to your ongoing use and registration of the trade mark.
- If the other party has acted in Bad Faith, an action to remove the registration may be appropriate. An example of this may be if a distributor registers the principal’s trade mark without approval.
- If your trade mark has been used and you have built up a Reputation in the mark before the other side filed their application, then an action to remove the registration based on consumer deception and confusion, breach of the Fair Trading Act provisions and/or Passing Off may be appropriate.
Although the above options exist, the actions are significantly more complex and are associated with greater business risk than holding registered trade marks of your own at the outset. As a registered trade mark owner you will be in a stronger position with greater certainty of the ultimate outcome and in our experience will be much less likely to need to enforce any registered trade mark rights you may establish and hold. Obtaining a registration almost always saves you significant time and costs in dealing with conflicts with other parties, as the Commissioner of Trade Marks will object on your behalf to any future filed conflicting applications. Monitoring the Register is also recommended in case there is an Office oversight based on insufficient knowledge of your market sector and the terms and brands used, as well as to provide a useful insight into future trends in the industry.
Given the December 2012 introduction of the Madrid Protocol, now is an excellent time for us to review your business branding and ensure that adequate protection and follow up monitoring is in place for your key brands.