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Legal protection from the copycats of the world

Legal protection from the copycats of the world

A few weeks ago I was asked by a reader if I would explain why some companies’ trademarks have the little “®” and “™” symbols printed next to them. Good question.

The short answer is that it is a warning – the ® and ™ characters are just signals to let everyone know that the trademarks exist and are theirs! Theirs! THEIRS! You don’t have to use the characters, but it’s a good idea if you have the kind of mark everyone wants to copy.

Now you all know that a trademark is a symbol (distinctive words, or a design or logo) that is linked to someone’s business. The first person to use a particular mark in trade becomes the owner of that mark and can stop other people from using it. You have rights in the trademarks you use in trade whether or not they are registered.

Trademarks exist in relation to the products or services they are attached to. For example, companies that refine coal are allowed to call their product “coke” without fear or retribution from the people who have rights over the word “Coke” when it is used in relation to fizzy drink, clothing and apparel and other merchandising materials.

™ just means trademark. Normally it refers to an unregistered trademark. If someone other than the owner wrongfully uses an unregistered mark, the owner can still take legal action under the Fair Trading Act (because the conduct is misleading) or under a nice area of law called “passing off” (“Hey! You are passing off your rubbishy product as if it was mine! Desist! I say. I built up the goodwill in that product”). Passing off cases are fun: a successful trademark owner can recover an “account of profits” from the trademark infringer (which usually means all of the gross profit that resulted from the trademark infringement).

® means registered under the Trade Marks Act 2002. Registered trademarks have all the rights and benefits of unregistered ones – and more. It is a lot easier to prove infringement of trademark rights, stop the infringers and get your account of profits. But don’t use ® unless your mark is actually registered. Misleading conduct again.

You can find more about local trademarks on www.iponz.govt.nz. The Iponz website provides details like whether the trademark is current, who owns it, and what goods or services the mark relates to. You can even register a mark that you own – but be careful: if it’s not distinctive (use a logo that you own in that case), or if it’s descriptive or too close to someone else’s, you might well get turned down. I would use a trademark attorney – they know what they are doing. Wrongful or inadequate registration is pretty expensive.

I was going to use Hell Pizza’s various trademarks as examples, but my law clerk found a better example – a trademark registered in New Zealand under the name of an American corporation called Hell’s Angels Motorcycle Corporation. You might recognise it – the words “Hells Angels” (no apostrophe) spelt out in bones above a picture of a skull … go check it out on Iponz! If you made goods incorporating the mark without getting proper authorisation, then the Hell’s Angels Motorcycle Corporation could bring trademark infringement proceedings against you.

This article is intended for general information, and should not be relied on as specific legal advice. You should consult a lawyer for advice relating to your own specific legal problems. Rae Nield can be contacted at raenield@marketinglaw.co.nz.


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