Check First, invest second

Is your trade mark available and suitable for use? This is a critically important question often ignored by business owners as they invest heavily in their trade mark and launch it onto the market – only to find they may not be able to use it.
So how do you research trade mark availability?
Market based research will determine whether a third party is already using the same or similar trade mark for your product. But don’t limit your research to the exact product. If you intend to launch, say, a range of organic skincare products you may not be impressed if someone is using the same name for products that have a negative impact on the environment. You also want to be sure that your use of the trade mark will not infringe any existing third party rights.
Remember, just because a brand is well-established in New Zealand doesn’t mean that it is suitable or protectable in an overseas market. Take New Zealand’s Montana wines for example. This well known brand was not suitable for use in the US market where ‘Montana wines’ refers to wine made from grapes grown in the state of Montana – thus Montana’s shift to ‘Brancott’ as the lead brand in that market. By investing in trade mark clearance or suitability research you can avoid this situation, along with the extra investment necessary to create a new brand for a particular market.
Cultural attitudes
It is also important to consider how your brand will fit with the cultural attitudes and preferences of consumers in your target market. What works in the US, for example, may not be so successful in the UK. Americans seem to like ‘cutesie’ animals; however, we in New Zealand may consider ourselves a bit more sophisticated!
Also be cautious of any connotations your brand name and imagery may have in specific markets. Would you buy a Pajero SUV if, in your country, the word “pajero” was slang for a certain part of the male anatomy? Thus the Mitsubishi Pajero is known as the Montero in North America and Spanish-speaking countries.
So, if English is not the first or commonly spoken language in the export market, ensure you research any significance that might attach to your proposed brand to avoid adverse connotations.
As well as any negative connotations, consider whether your brand may be offensive in a specific market. Zespri is a good example of a made up name for a New Zealand product that is available throughout the world – but only after extensive research found that Zespri would easily cross borders without offending any cultures.
Indeed, a word made up in New Zealand may have significance in another country which can lead to complications.  For example, Wool Partners’ Laneve trade mark could be viewed as a surname in the US or the word for ‘snow’ in French and Italian. While such meanings will not necessarily prevent registration of the trade mark in the US or Europe, it may add to the cost and time to secure registration of the trade mark in those markets.
Distributor risks
Another risk of not registering a trade mark in all relevant markets is that a third party may ‘do the dirty’ and seek to register your trade mark before you do. I hear of this happening from time to time, particularly in Korea, and chances are it is your distributor who does this to exhort money or favourable distribution terms. The lesson here is to register your trade marks before appointing a distributor and cover the ownership of the trade mark in any distributor agreement.

 
As trade mark registrations are territorial, it is also important to identify your relevant markets and seek registration in your important markets at the appropriate time. New Zealand belongs to a number of international agreements relevant to trade marks including one that provides a six month grace period from the date of filing your trade mark in New Zealand to filing it overseas. Your trade mark will take priority over any third party trade mark filed during that six month period.
Ultimately, there is no such thing as a truly international registration and even when New Zealand joins the Madrid Protocol (which will assist in the process of obtaining registration of your trade mark in a number of countries) the trade mark will still be examined for ‘registrability’, and in some cases availability, in each country designated.
Thus, issues of availability and suitability are always relevant.
Elena Szentivanyi is a registered patent attorney (New Zealand and Australia) and principal with Henry Hughes Patent and Trade Mark Attorneys. For more information go to www.henryhughes.co.nz