Newsletter – November 2016

In this Newsletter Issue:

  • IPONZ closed due to Earthquake
  • What’s in a Name
  • New Zealand Trade Mark Scam – Payments Made to New Zealand Trade Mark Owners
  • Trade Marks and Social Media

IPONZ closed due to Earthquake

The Intellectual Property Office of New Zealand was closed on Monday and Tuesday the 14th and 15th of November due to the North Canterbury earthquake and subsequent building assessments.

This means that if a deadline for filing an application or document fell on Monday or Tuesday, the application or document can be filed the next day when IPONZ is open, and will be considered to have been filed on time.

What’s In A Name

When considering a potential name for your brand or business, it’s worth giving thought to how you might protect that name. A brand can be a valuable asset for a business if correctly protected. However, if a business can’t stop others using their name, that name doesn’t carry much value.

The best way to protect a brand name is to register it as a trade mark. However, registering generic terms as trade marks is not allowed as it would stop other traders who might legitimately want to use the mark.

So while choosing a generic name for your business (e.g. Auckland Plumbers, or Christchurch Builders) tells your customers what you do, it can be very difficult to register as a trade mark and therefore difficult to protect and build a brand around.

The easiest trade marks to protect and therefore some of the most valuable are unique and distinctive – think Google, Nike, or Panadol. Once you decide on your name, Zone IP and Zone Law can help you protect it. Contact us today to find out more.

New Zealand Trade Mark Scam – Payments Made to New Zealand Trade Mark Owners

The Commerce Commission has successfully returned over $600,000 to New Zealand trade mark owners who were caught up in a trade mark scam.

Hundreds of New Zealand businesses had paid fees for non-existent services to TM Publisher, an international web-based trade mark publication company which sent fake invoices for unauthorized services to New Zealand trade mark owners.

Over 280 trade mark holders have had their payments returned after the Commerce Commission found TM Publisher was in breach of the Fair Trading Act for misleading trade mark owners. A warning was also issued to TM Publisher.

While this time the money was able to be recovered, this shows the need to be vigilant. Any correspondence that requests payment should be treated with caution and checked for authenticity prior to payment. If in doubt contact your lawyer or IP professional.

Trade Marks and Social Media

Social media has upended the way that companies deal with trade mark issues. Consumers are able to quickly make a decision about a particular issue and disseminate that information at rapid speed, forcing companies to react quickly. However, with careful foresight and planning these issues can be avoided.

A recent example of this is New Zealand brewery Tuatara, who filed a trade mark application for the mark AMARILLO for beer. However, Amarillo is a variety of hop used in beer making, and so it looked like Tuatara were trying to claim a monopoly on a type of hop.

Registering generic terms as trade marks is not allowed as it would block other traders who might legitimately want to use the mark, for example a brewer stating their beer was made with Amarillo hops.

A prominent member of New Zealand’s craft beer community noticed the application had been filed and posted about it on social media. From there the news quickly travelled around the community, being retweeted and blogged about, including by other breweries, before being picked up by national news media.

Shortly afterwards, Tuatara withdrew their application and released a blog post admitting they made a mistake in attempting to register the name AMARILLO, and saying they would listen to and learn from the industry. At the same time, perhaps as an act of goodwill, Tuatara also cancelled an existing trade mark registration for the mark TOMAHAWK, also a hop variety.

In today’s social media landscape, things can move incredibly fast. The application was filed, noticed and tweeted about, made national news, and was withdrawn within the space of a week. It is important to act quickly in dealing with these issues, and also important for both you and your trade mark professional to know your market and consider potential implications before making an application.