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Spring has finally arrived and it’s time to spring clean your house, your office—and your Trade Mark Portfolio!

It’s good practice to occasionally dust off your Trade Mark Portfolio and check that it is up-to-date with your business. In particular, it is a good idea to periodically review the following areas.

What you’ve got

Do you have adequate protection for any new trade marks you are using?

Have you have started marketing your goods or services offshore or expanded your product range?

If you have adopted new trade marks or refreshed your old ones, protect these. This may mean protecting a new mark, broadening your protection for an existing one, or filing it in a new country where your goods are now being sold.

How you’re using it

Although not a requirement in New Zealand, it is advisable to use the ® symbol with your registered trade marks.

We recommend using the ™ symbol for any unregistered marks to clearly show they are being used as trade marks. (Using the ® symbol for an unregistered mark breaches the law and is not recommended).

Also ensure that all use of your trade marks preserves their distinctiveness. Word marks should be differentiated from the surrounding text by using capitals, quote marks, bold, or italics.

Trade marks should be used as an adjective, rather than a noun. For example, it is better to use ‘how much does SMITHS computer system cost?’, rather than ‘how much is SMITHS?’.

If you use your trade mark as a noun, there is the risk that it will become known as a generic name for your product. In that case, it is possible for a third party to seek removal of the trade mark from the Register. Famous examples of words that were once trade marks but are now generic names are; ASPIRIN, ESCALATOR, and ZIPPER.

Use it or lose it

If you do not use a registered trade mark in New Zealand for three years or more, it will become vulnerable to removal from the Register.

To further guard against removal, also ensure you are using the mark in the form registered. A registered mark can be removed for non-use even if a different version of it is still being used.

What other parties are using

If you are allowing other parties to use your trade marks, or if you are using other parties’ trade marks, ensure that you have adequate licensing agreements in place.

Conversely, if you have located other parties using your intellectual property without your consent, take prompt action to stop them. Failure to act promptly can affect any future infringement claims.

Of course, make sure that you are not using other parties’ trade marks without their consent. Lack of knowledge of another party’s rights is not a defence to trade mark infringement proceedings. Before you adopt a new brand or move into a new area have a full trade mark search carried out to ensure that your trade mark is not already in use or registered to another party.

Considering the above four areas on a regular basis and taking any necessary action will ensure that you retain a robust Trade Mark Portfolio. If you have any questions about securing or managing your Trade Mark Portfolio contact a Kensington Swan expert.



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