Finn:
Welcome everyone to our webinar today on supercharging your brand—how to protect your brand and drive growth. My name is Finn, and I’m excited to introduce our co-hosts today: Rebecca Jones and Sarina Cali.
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This guide explains the essentials of trade marks and the steps required to register a trade mark.
Rebecca:
Excellent. Thanks, Finn, and thanks for joining us today, everybody. Today, we’ll be taking you through some branding essentials. We’ll start off with essentials you need to know about building a strong brand. We’ll take you through the trademark registration journey, what to expect along the way, and how you can use trademark and IP rights to leverage business growth. We’ll also cover what you need to know about maintaining and enforcing your rights. As Finn mentioned, we’ll answer some of your questions at the end, so please feel free to submit them throughout.
Rebecca:
So, we all know that a well-planned and well-executed branding strategy can make your business’s trademarks one of its most valuable assets. So, what creates a distinctive trademark that stands out in the marketplace? Well, a good brand is unique, it’s distinctive, it’s memorable, and, most importantly, it’s able to function as a badge of origin, distinguishing your goods and services from those of your competitors.
Now, uniqueness is the cornerstone of trademark protection. Your mark should be one of a kind in your market sector, allowing a clear association between your brand and your business. Think of brands like Xerox for photocopying or Google for search engines. These names didn’t exist before the companies created them as brands.
Distinctiveness means that your mark immediately signals to consumers that your goods or services come from a particular source. The more distinctive your mark, the stronger your legal protection. Invented words like Kodak or Exxon are inherently distinctive, while marks that suggest something about your product may be weaker in terms of trademark protection and may require evidence of acquired distinctiveness through use to be enforceable.
Memorability ensures that your trademark sticks in consumers’ minds. Simple, catchy trademarks are more likely to be remembered and associated with quality services or products. Consider how Nike or Apple are both short, punchy, and easy to recall.
Distinguishing capability is legally essential to claim trademark rights in your brand. Your trademark must clearly separate your offerings from those of your competitors. If consumers can’t tell whose product they’re buying based on the trademark applied to it, it fails its fundamental purpose. As a result, it is unlikely to be registerable or enforceable.
Rebecca:
So, what types of brands should be avoided? The strongest branding utilizes trademarks that are not descriptive, generic, or similar to other existing trademarks. Descriptive or generic marks directly describe the goods or services and are difficult to protect and enforce. Think of trademarks like “Best Coffee” for a cafe or “Quick Delivery” for courier services. They tell consumers what you do, but they don’t identify who you or your business is.
The test is whether other traders, lacking improper motive, are likely to need to use the same or similar term to describe their goods or services. If so, it would be unfair to grant a single trader a monopoly in that term as a trademark. You also want to avoid trademarks that are confusingly similar to existing marks, as this can create a risk of consumer confusion and potential legal challenges. Searching third-party trademarks before adopting your own brand is crucial to avoid infringement issues and to ensure your investment in brand building isn’t wasted.
Rebecca:
Let’s look at some of the different types of trademarks. There are words and logos, which are the most common. You can also register slogans as trademarks, and sometimes even colours, sounds, or scents—although these are rarer.
Word marks are the most common and often the most valuable. They protect the text or term regardless of the font, colour, or stylisation used. Examples include Coca-Cola or Microsoft.
Logo marks protect specific visual elements of your branding, with or without the associated wording. Logo trademark registration can work alongside wordmark registration for comprehensive brand protection. The Apple logo or Nike’s swish device are examples of logo trademarks that are instantly recognisable globally.
Slogans can be protected if they’re distinctive and not merely informational. For example, Nike’s “Just Do It” and McDonald’s “I’m Loving It” slogans have been registered as trademarks.
Rebecca:
Other types of non-traditional trademarks are less common but still possible as long as they meet the usual requirements. For example, colours like Cadbury’s purple packaging for chocolate or sound marks like Nokia’s distinctive ringtone. It’s even possible to register a particular scent or smell as a trademark if it’s capable of indicating to consumers that the product associated with that particular smell originates from your business only.
Rebecca:
A useful way to think about registered trademarks is that they can function as both a shield and a sword. Trademark registrations act as a shield by protecting your use of the brand, serving as a defence to third parties claiming that you’re infringing their similar trademark rights. By registering your trademark, you gain the certainty of knowing that your use is protected and that it won’t land you in hot water.
Simultaneously, trademark registrations act as a sword by giving you the legal right to take action against infringements. This dual function makes trademark strategy crucial for business success.
Rebecca:
So, when selecting a new brand, you want to think about two things: Is my trademark available for me to use? And is it registerable and therefore enforceable?
Let’s look at some availability considerations. Firstly, and probably most importantly, is your trademark able to be used without infringing third-party rights? You want to be aware of not just identical trademarks registered for identical goods or services, but also similar marks for similar product categories.
Even if your desired trademark is available for your current activities, consider whether there’s room for future business expansion into other product or service categories. If you’re planning to trade internationally, you’ll want to check key markets to ensure that you can maintain brand alignment across borders.
Sarina:
Now, let’s look at the difference between registered and unregistered trademarks. If you’ve been operating your business for five years and discover that a competitor is using an identical brand name for similar goods and services, without registration, you face a complex legal challenge. You’ll have to establish unregistered rights through earlier use and actions like passing off.
With registration, the process is far more straightforward. You have a registration certificate that you can send across to say, “This is mine.” The legal pathway and remedies are clearer and more cost-effective.
Sarina:
From a commercial perspective, registration creates several strategic advantages. The two that our clients tend to focus on are enforcement (the sword) and defence (the shield). But once registered, your trademark also becomes a registrable asset—an independent value. You can license it, assign it, or use it as security.
Sarina:
So, before you file a trademark application, it’s important to do your due diligence and conduct pre-filing searches. This will help you understand the landscape you’re entering. If you don’t do your due diligence, you might face opposition, infringement claims, or discover that your rights are narrower than you anticipated.
Sarina:
When starting your search, we recommend you examine identical marks and broader classes that might overlap with your intended use. But, remember, database searches require strategic interpretation, not just keyword matching. It’s also a good idea to conduct comprehensive marketplace searches across search engines, social media, domain registers, business name registers, and e-commerce platforms.
Sarina:
Not every brand element can be registered as a trademark. Descriptive marks, geographic terms, common surnames, and laudatory terms often face significant hurdles. If you’re concerned that your trademark is too generic or descriptive, you can combine descriptive elements with distinctive features to improve your chances of registration.
Sarina:
Now, I’ll pass it back to Rebecca to discuss the application process.
Rebecca:
In the application process, we need to consider ownership, the trademark itself, and the goods and services it will cover. The first objection we often see is an identical or deceptively similar mark on the register. The second is a distinctiveness objection, where the trademark is deemed too descriptive or too commonly used within your industry to be registerable.
Rebecca:
Also, be mindful of the difference between the TM and R symbols. It’s an offence to use the R symbol before achieving registration. The TM symbol can be used on unregistered trademarks as a sign of intent to protect it.
Rebecca:
So, let’s run through a few ways that strong trademark rights can facilitate business growth. A strong and consistent brand facilitates brand recognition and customer loyalty. It helps to position your business uniquely in the marketplace, which justifies premium pricing and protects your market share from competitors.
Rebecca:
Trademarks are also essential for franchising, as they help you scale your business while maintaining brand consistency and quality control.
Rebecca:
A strong trademark portfolio can also increase your business valuation, attract investors, and facilitate mergers and acquisitions.
Rebecca:
Finally, let’s talk about how to maintain and enforce your trademark rights. Monitoring for new applications in your relevant classes and acting early can help you protect your rights and avoid costly legal action later on.
Finn:
Thank you, Sarina and Rebecca. That concludes the main part of our webinar. We’ll now move to the Q&A session.
Rebecca:
So, we’ve had some questions come through already, and we’ll start with the first one. Does holding a registered trademark in New Zealand provide any legal enforceability or protection within the United States jurisdiction?
That’s a really good question. It’s important to understand that trademark rights exist on a country-by-country basis. So, if you have your trademark registered in New Zealand, but you’re intending to trade in the US, that New Zealand registration would not provide you with any protection for your activities in the US market and would not be enforceable against third parties in the US market if they’re trading under confusingly similar trademarks. So, always worthwhile thinking about your international protection, as well as protection in your home market.
One thing that you can do, in terms of linking them together or at least getting some benefit from your underlying home market or New Zealand registration in this case, is if you file in your home market first and then you file internationally within six months of that first filing date, you can actually claim the priority from your earlier filing date. That can be a good way to stagger the cost and make sure you aren’t beaten to it by other traders during that six-month period in your target countries.
Would you like to jump and answer a question, Sarina?
Sarina:
Sure. We have another question. Does a registered word have to be used in lowercase or uppercase, or can it change depending on usage?
For the purposes of an application, we generally recommend filing the trademark in uppercase just to avoid any undue emphasis on any specific letter or lettering. That said, if you do use your trademark in a specific variation—like the example given, where “hydrate” is used with a capital “X” or lowercase “hydrate”—if that’s how you plan to use it extensively, we recommend filing the application in that form. But as we’ve mentioned, trademarks are protected not only identically but also phonetically similar trademarks. So having differences in spelling or uppercase versus lowercase will have very limited impact on your protection. I would recommend filing the application in the version you plan to use most often.
I’m happy to expand on the international question. We did have another question regarding international protection, which was quite similar but expanded—whether there is any application for global protection.
Rebecca:
Unfortunately, global protection or global registration doesn’t exist. However, there are easier, more cost-effective avenues to achieve international protection in multiple countries, and that’s through something called the Madrid Protocol Application.
A Madrid Protocol application essentially uses your base application in your country—New Zealand or Australia—and we file it to WIPO, the World Intellectual Property Organization. WIPO then disseminates it to your countries of interest, whether that’s China, the US, Canada, the EU, etc. This is the most cost-effective way because it avoids engaging associates in each of those countries to file the applications on your behalf. The only time we’d need to engage an associate would be if objections arise. The process is quite similar to the process in Australia: if objections arise, a lawyer gets involved, and that’s the same process internationally.
Sarina:
Thanks, Rebecca. We’ve had another question come through: What are the most effective ways of monitoring your branding?
If we’re talking about monitoring the marketplace for third-party use or misuse of your branding with a view to taking enforcement action as needed, I would say great ways to monitor this are online searches. I think Sarina mentioned a few earlier, but regular Google searches are useful. You can set up alerts on Google so that if any new pages are published that include reference to your branding, they’ll be sent to your inbox by an automated Google report, and you can follow up on them from there.
Social media is another great tool, and making sure your team are well educated in keeping their eyes peeled is also important. Often, people on the ground or coming across different things in the marketplace can be a great way to get insight. Having a culture within your business of keeping an ear to the ground is a good way to stay informed about what’s happening.
You can also monitor pending trademark applications via IPONS and IP Australia. Both have publicly accessible databases that are searchable. You can see what competitors are doing, and you can even search by applicant names. This lets you know whether competitors are planning to expand into other product categories or if they’re potentially adopting a new trademark that is similar to yours.
Rebecca:
We’ve got another international-related question. If you do not have a registered company in a certain geography, are you still able to trademark your brand if you do work in that market?
The answer to this is absolutely yes. We often see Australian businesses that own global trademark portfolios. It’s not a requirement to have an entity incorporated in each of those jurisdictions. There may be instances where you do have business structures set up with entities in different jurisdictions, and in that case, you may elect to have the holding company or the Australian entity own the IP and then license it to those different entities operating in various jurisdictions. So, you can definitely own trademarks in different countries without needing to be a national or incorporated entity in that country.
I’ll pass back to you, Sarina, if you’d like to answer another one.
Sarina:
Sure. Let me take a look at the next question. “I’m a service business. Can I protect my company name and logo? Should I bother?”
Short answer: yes. We might be slightly biased as trademark lawyers, but as we’ve gone over, registration is the more cost-effective and practical way to enforce your rights and protect your business. Having unregistered trademarks is fine, but it can be really expensive, time-consuming, and just a massive headache to try and protect yourself without that formal registration in place. As a base, we generally recommend protecting your trading name and logo as a start.
Rebecca:
We’ve got another one here asking about protecting your trademark on social media. How do you protect it without turning off your customers?
With social media enforcement, I think having that information in place is the most important first step. Keeping an eye on things that are happening and getting familiar with each platform’s takedown policies is essential. Knowing what’s required from you to take down infringing accounts or posts is important.
Having your trademark registrations in place will often be a requirement for online platforms to enforce your IP on your behalf. For example, Amazon’s brand registry will look for evidence of your trademark registration to allow enforcement. So, having your registration in place helps with this.
I think we’re running low on time, so that’s all the time we have for questions today. Sorry if we didn’t get to yours. I’ll pass back to you, Finn, to wrap us up.
Finn:
Perfect. Thanks, Rebecca. Yeah, I guess lastly, thank you very much for your time today, everyone. If you did want to submit your details in the survey at the end, we can set up another time and answer any more specific questions that we might not have got to today. We can also talk through how our membership could benefit you and your business. Last point of note: it’s a free webinar, and we really value your feedback, so please take 30 seconds to review and give us your thoughts. Thank you very much for joining, and we hope you have a great rest of your day.
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