Trademark a 'weapon', not a right

There is no such thing as an iron-clad trademark, a Wellington intellectual property expert says.

Penny Catley said businesses were often misguided in their understanding of how much security a trademark offered.

Responding to the case of Ruby Apparel of Auckland's outrage at Australian budget-brand Rubi Shoes setting up in New Zealand, Ms Catley said any trademark was open to attack and was only a base point to defend a brand. "It puts a stake in the ground. It means you don't have to prove a reputation."

From there the strength of the protection depended on many variables, such as how long you had been trading, how many other similar brands there were, and how robust someone attacking your trademark was prepared to be.

"It doesn't give you an indefensible right, but it does give you a hell of a lot more than otherwise. It gives you a weapon, and it is a strong weapon to use."

Rubi Shoes had set up an outlet in Auckland and trademarked its name.

Ruby owner Christine Sharma admitted the outlets' services and products were starkly different, but said the names were too close.

Ms Sharma said she expected the Intellectual Property Office (IPONZ) to fight the fight for them, and had registered an objection to Rubi's trademark with them. "I do not want their stores called Rubi. We haven't worked as hard as we have to let them walk in and dovetail on the same name."

IPONZ spokesman Simon Gallagher said the assessment process would take at least six months. The next step for Ruby was to go to the High Court, which Ms Sharma claimed would cost $100,000. She said her lawyers had said IPONZ would protect the trademark.

Mr Gallagher said IPONZ was a "gatekeeper" but a trademark was an individual property right

There were many variables that could be tested, he said, and businesses had to watch out for their own intellectual property.

TRADEMARK TIPS

* Search first: ensure no-one else is using your mark in your industry

* Register it and use it: the longer your trading history, the stronger your case

* Choose a unique brand: don't pick a word or phrase common to your industry

* Keep an eye out: IPONZ doesn't have to tell you of a similar application

* Be prepared to defend it: a trademark is only a deterrent, not a guarantee

- © Fairfax NZ News