Baldwins Law Senior Associate Kate Giddens discusses how businesses can use their trade mark correctly. To hear more about this topic, Baldwins Head of Dispute Resolution Paul Johns will present a seminar, Trade Marks and Border Protection Procedures in New Zealand and Australia, at the Trade Marks and Commercial IP Protection Conference in Auckland on 11 June.
A distinctive and well managed trade mark will create a sought after reputation and grow valuable goodwill for your business. To build value in your trade mark, it is important to use your mark correctly. We have listed below some simple tips you can implement to ensure correct trade mark use.
Use your trade mark as an Adjective
A trade mark is an adjective, not a noun or a verb. Remember that your trade mark should uniquely indicate your products and/ or services.
Don’t use, or allow your trade mark to be used, as a verb. A trade mark is not something that you or others do, for example, “was that photoshopped?”, “I’ll google it”, “facebook me”.
It can be really tempting to use your trade mark as a noun to ensure that consumers understand your goods or service, especially when promoting new products or service. The problem is it can be too easy to slip from use as a trade mark to use as a description of your products, making it easy for people to use your trade mark when describing similar goods. For example aspirin, escalator, trampoline were once trade marks indicating a product from one trader, now these describe a product category.
To stop this from happening your trade mark should always be followed by a noun or the name of the product or service i.e., Jacuzzi hot tub, Google search engine, Crock-Pot slow cooker, Chapstick lip balm, Popsicle ice blocks, Pink Batts glasswool insulation.
Following these tips will ensure that your trade mark does not become a common or generic name for the goods. This is known as ‘genericide’ and it can be fatal to your trade mark. If a trade mark becomes “a common name in general public use for a product or service in respect of which it is registered” it is much easier for a third party to challenge its registration. A few examples of trade marks that have suffered genericide include pilates , footlong and granola .
A quick and easy check you can perform is to remove the trade mark from the sentence, does it still make sense? If the answer is no, it is more than likely that you have used it as a verb or a noun.
Make your trade mark STAND OUT
Emphasise your trade mark so it stands out from surrounding text and can be easily identified and not confused with ordinary descriptive or generic terms for the goods/services you offer.
Some methods place more emphasis on the trade mark than others, but the aim is always to distinguish your trade mark from the everyday term used to describe the products or services provided. Here are some examples with yo-yo:
- all capitals: YO-YO spinning toy
- title case: Yo-Yo spinning toy
- quotation marks: “Yo-yo” spinning toy
- italics: Yo-yo spinning toy …
- use of the word “brand”: Yo-yo brand spinning toy
Identify your trade mark’s status
It’s important to indicate your claim to ownership of the trade mark from the outset. The easiest way to inform consumers and competitors is to use the ™ or ® symbol.
The ® symbol
The ® symbol is reserved for registered trade marks only. Did you know that it is an offence in New Zealand to claim that a trade mark is registered when it is not?. New Zealand law allows overseas exporters who may own the registration overseas to use the ® symbol in connection with their products and services in the New Zealand market
The TM symbol
The TM symbol is used to identify a trade mark. Use of the TM symbol does not mean that a trade mark application has been filed; it simply shows that the term is being claimed as a trade mark. Some brands choose to use TM even though the trade mark is registered because it is more widely understood than the ® symbol. It may also be that the packaging and/or labels for the goods need to cover a range of markets, some where the trade mark may not be registered. If you are considering exporting, it’s important to check the requirements of the destination market. See our article here on Australian requirements.
If repeated use of TM or ® is impractical or is considered repetitive by your web developer or marketing team, consider including the symbol when the trade mark is first used in the title for example and or in the text.
In addition, you could include a credit line where appropriate. A credit line:
- identifies that certain marks are registered and in whose name they are registered;
- notes whether they are being used under licence; and/or
- includes a warning against unauthorised use.
A credit line can appear anywhere on the product packaging, and is also typically displayed on a copyright page, the back of a package or at the end of a document or webpage.
Be consistent with your use
To avoid confusion, make sure that you use your trade mark consistently. Others will follow your use, so it is important that you represent your trade mark in the way you initially intended.
People will quickly begin to recognise your trade mark – which means your hard work is paying off! Through consistency, you make it much easier for the consumer to identify and create an awareness of your brand, ultimately helping to grow reputation and goodwill.
Tips to takeaway:
- use the trade mark as an adjective, not a noun or verb. This distinguishes the trade mark from the generic term it modifies; use your trade mark with its generic descriptor;
- use your trade mark in the singular form, not as a plural. Use the plural form of the generic product to which you are referring instead;
- trade marks should not be made possessive. Instead, the generic product name should be made possessive.
- do not hyphenate a trade mark with a generic descriptor;
- make your trade mark stand out from surrounding text;
- use the appropriate TM or ® symbol next to your trade mark; and
- be consistent in how you use your mark – pick a style and stick with it.
Senior Associate Kate Giddens helps local and international clients to protect, enforce and defend their trade mark rights. Kate specialises in trade mark protection, management and enforcement. She has particular expertise in the automotive, entertainment, food and beverage, sportswear and telecommunication industries. Before joining Baldwins, Kate worked at the Intellectual Property Office of New Zealand (IPONZ), as a senior trade mark examiner. Kate majored in marketing while studying for her commerce degree and has always been drawn to the intangible aspects of brands and brand culture. Her skills and interests are ideal for work in intellectual property law. Contact Kate at [email protected] or connect via LinkedIn