Tough times ahead for trade mark protection

Tough times ahead for trade mark protection

Building strong brand reputation is often linked to the extent to which an owner is able to prevent registration and use of identical or similar trade marks by other brand owners.

Following two recent New Zealand High Court trade mark decisions it just got harder to prevent others from registering similar or identical trade marks.

There are, however, steps you can take to increase your prospects of being successful in trade mark opposition proceedings. Those steps can prepare you for when applicants apply to register trade marks similar to yours.

When someone applies to register a trade mark, the Trade Marks Act 2002 allows anyone the opportunity to oppose the application. But there can be a catch. To base an opposition on one of the broadest grounds of trade mark opposition, an opponent (who claims to have prior rights in a similar or identical trade mark) is required to first establish "awareness" of the trade mark it relies on.

Establishing awareness of a trade mark first requires an opponent to identify the relevant market for the trade mark applicant's goods/services (e.g. if the applicant's goods are baked beans then the relevant market is likely to be the general purchasing public). Next the opponent needs to provide evidence that a substantial number of persons in that market has awareness of its trade mark. What a substantial number of persons is will depend in each case on the market in question.

So, is establishing 'awareness' of a trade mark essential in an opposition?

If you have a registered trade mark, no. However, owners of registered trade marks are likely to benefit from establishing that there is an awareness of their trade mark(s).  The benefit is that the provision of the Act that requires awareness to be established is likely to offer the owner of a registered trade mark a broader scope on which to base an opposition than other sections in the Act.

If you have an unregistered trade mark and are opposing on the ground that the trade mark is confusingly similar to your trade mark, you must establish awareness. Failing to do so will mean the decision-maker is not required to even consider whether the trade mark application is confusingly similar to your trade mark. 

First, ensure your important brands are registered as trade marks. This will allow you to challenge the trade mark application on other grounds without needing to establish awareness of your trade mark. 

Secondly, consider what systems you have available for collating evidence of awareness and keeping it refreshed. To be able to provide sufficient evidence of awareness of your trade mark, you will have to be able to access evidence relating to use of your trade mark that includes:

- Website hits (and demographics of users)
- Readership details for print media
- Viewership details for television media
- Event attendance (and how this links to the relevant market)
- Quantities of a product sold / available for sale
- Geographical spread of sales
- Evidence of the size of the relevant market (and sub-markets) and percentage share
- If your market is a specialist or niche market, evidence of how awareness of your trade mark in its market transfers to awareness in the relevant market
- Evidence from the relevant trade about awareness of your trade mark.

Even after collating the above evidence you may still face the question of whether or not to invest in market surveys and expert evidence.

Those examples are self-evidently not exhaustive, but are an important starting point. Each case will have its own specific requirements. 

So, are you in the best position to defend your brand? Would you be able to link your trade mark to a substantial section of the relevant market (whatever that may be)? Because being able to do so may be all that prevents a competitor from registering an arguably similar mark.

Earl Gray is a partner and James Maxwell is a solicitor at Simpson Grierson.

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