The Pitfalls of Trade Mark Self-registration

Registering your trade marks yourself may seem tempting, but mistakes early on can create significant issues that can end up costing you more in the long run.

The registration of a trade mark is not automatic. Examiners at IPONZ have to consider whether the trade mark and application complies with the requirements of the Trade Marks Act. Factors the examiner has to consider is whether your trade mark is similar to a prior registered trade mark and any meaning that the trade mark may have. Third parties can also object to your trade mark and navigating this process can be challenging.

While engaging a suitably qualified and experienced IP attorney from the beginning may seem like an unnecessary cost it is likely to save you stress, time and cost in the long run. In this post we identify some issues that we know have been a hurdle to self-filers.

Lack of proper searching

Many people who register their own trade marks fail to conduct a comprehensive search using the IPONZ online tools prior to filing their application.

In considering whether your trade mark should be registered, IPONZ considers both the similarity of the trade mark and the goods or services that you intend to provide with third party trade marks and the goods and services covered by those earlier trade marks.

If you are seeking to register a trade mark that resembles another mark already registered for goods or services similar to your then IPONZ is likely to object to your trade mark. An example of this would be seeking to register a mark such as ‘Cookie O’clock’ in a class where ‘Cookie Time’ is already registered for the same or similar goods.

Taking your time to do a comprehensive search can save significant time and money when attempting to register your trade marks.

Descriptive trade mark

A strong trade mark is one that does not describe the nature or character of the goods or services. Those who self-register often overlook the descriptive/generic nature of their mark. If your mark includes a term that could be used to describe your goods/services separately from your brand, it will not be accepted as a trade mark.

A good thing to think about is whether a competitor would likely need to use your mark to describe their own goods/services without intending to infringe on your intellectual property rights. This includes phrases or terms that have become generic in the public space. An example of this would be if you were attempting to register ‘Chewy Cookies’ as a trade mark for cookies. Obviously anyone can describe their cookies as chewy.

Geographical location

Including a geographical location in your mark will not help with the registration of your trade mark.

Including a geographic term simply notes the physical origin of the goods, and may be need to be used by other traders to describe where their goods come from or their address. An example of this would be if you were attempting to register ‘Wellington Cookies’ as a trade mark.

Description of goods and services

When you file your trade mark you have to pick the classes and describe the goods and services to be covered by the application.

The categorization of goods/services by class is based on an international categorization system and may not be instinctive to the uninitiated.

Your trade mark should be registered in all the classes and for all the goods/services for which you wish to use your trade mark. You should take future plans into account when considering which classes and description of goods/services to list in your application. This future gazing needs to be balanced with the possibility that if you do not use your trade mark for 3 or more years it can be vulnerable to a non-use action by another party.

Registering in additional classes does cost more, but it is important to think carefully about whether this adds value to your trade mark and will prevent problems in the future.

Costs

While searching and preparing your application yourself is undoubtedly cheaper, you can end up incurring more costs down the line if you miss something.

If an examiner issues an adverse examination report, written arguments may need to be made that reference law and precedent. Most business owners will not be aware of the relevant law in this area and probably do not want to spend their time writing the necessary reply as this takes time that you could otherwise be spending developing your business. Even if you do decide to take up the challenge and file a response, you may not be successful in persuading the examiner to register your trade mark. This can make your intellectual property assets vulnerable, and you may lose any money and time you have spent on preparing an application yourself.

Enforcing your rights against another party can also end up costing a lot more if your application is unsuccessful or flawed.

Oppositions

Even if you are successful with having your application accepted for registration - this is not the end of the matter!

Another party may object to the registration of your mark. The opposition process is complex and there are many technicalities. If you get this wrong you could unintentionally lose your trade mark. Also, you may find yourself having to argue your case against an experienced lawyer.

Enforcement

If a situation arises where you need to enforce your trade mark rights and your registration is not comprehensive or is vulnerable, you may face a lengthy legal battle or lose the exclusive use of your mark.

This situation can arise when a mark is registered in the wrong classes, in the name of the wrong person, or is assumed to afford more protection than it actually does.

You may then have to rely on your common law rights which include the tort of passing off and the Fair Trading Act. Going down this route of enforcement is more complex, and can be avoided by having an accurate and effective registration.

If you’d like to get in contact with our team about your trade mark application, send us an email here.