Are your Trade Marks fit for Purpose? Take a moment to review your IP portfolio.

We are certainly all working in challenging times. No one day is like another. Whether we are in lockdown or working (and schooling kids) from home our world has changed, and we are changing with it.

We are excited seeing the amount of innovation and creativity that is arising from the opportunities that people are seeing in our changing world.

It is extremely important that brand owners are vigilant around protecting their trade marks. If you are creating new and inventive ways of moving into new markets, generating new products, or maintaining your trade mark in the current market, it is important to undertake a review of your trade mark portfolio.

Here is a simple checklist for you to book a time in your diary this week and work through over a cup of coffee:

What trade mark are you using to create a connection between you and your clients to achieve return business and/or word of mouth referrals?

  1. Have you protected the trade mark? Is it registered or still an application?  If an application, what deadline are you facing?
  2. What have you filed for? Have you filed for the word or the logo? Ideally you would want to file for both.


  1. What does your trade mark application or registration cover? There are 45 classes of goods and services (34 classes covering goods and 10 classes covering services).
  2. Are you using your trade mark on the goods that you sought protection for? If you are using your trade marks on goods that are not covered in the specification you filed then you need to think about filing a new application that covers the classes that now relate to what you are using your trade upon or in relation to. Does it cover your website? Online sales?


  1. Do you need a new trade mark for the new area of business you are thinking of getting into?
  2. It is important to undertake a marketplace search (local or international) to ensure that the trade mark you wish to use is free for you to use without fear of interfering with another parties’ rights?


  1. Where have you filed your trade mark – have you filed in NZ? Are you now exporting your product – have you sought protection overseas?
  2. Have you undertaken any searches overseas before using your trade mark? 
  3. If exporting you do need to have Border Protection Notices in place?


  1. Have you got a portfolio of trade marks? Is there a trade mark sitting there that you could reuse? Is it still a valid registration – trade marks need to be renewed every 10 years.
  2. Are any of your trade marks open to challenge? A trade mark needs to be used within a 3 year period or it may be vulnerable to removal on the basis of non use.
  3. Have you got trade marks sitting in your portfolio that are licensed? Are you effectively managing that licence arrangement to ensure that your trade mark is being properly used by the Licencee?? Is the licensee still in operation?


  1. Are there others out there making use of a trade mark that is the same or similar to your own?
  2. Are they infringing your trade mark? 
  3. In order to maintain the monopoly that your registered trade mark provides to you, it may be important to take action to stop them or if it is you – you may need to stop using the trade mark and find another trade mark.

If you are unsure about any of the above, please feel free to contact us.