FAQs
How do I select my goods and / or services?
Does TMJAM provide legal services?
Where can I use the TMJAM services?
Why should I register my trade mark?
Is trade mark registration compulsory?
What happens if I get an objection?
What happens if my trade mark application is accepted?
Can my trade mark registration be reversed?
TMJAM was created by former intellectual property lawyers. We saw a gap in trade mark practice for simple, technology driven, and cost-effective trade mark services. We also don’t like paper files, burdensome administration or hidden fees.
We use cutting-edge technology to file your trade mark applications in real time in New Zealand (and near real time in Australia), and our prices are fixed and affordable. No jargon, charging by the hour, unnecessary admin, or lawyers!
Our website is linked to IPONZ, which means that once you fill out our simple form, your trade mark is instantly filed. No middle man, no delays, just great technology.
The TMJAM trade mark wizard takes you through the process of filing an application to the intellectual property offices in New Zealand and Australia. For New Zealand your application is prepared and stored on our servers during the three step process. Once payment is accepted it files the application direct to IPONZ. The application is filed direct to IPONZ's servers meaning it is completed in real time.
For Australia, all of the information provided during the TMJAM wizard three step process is collected. Following a successful payment a TMJAM representative will file the application direct with IP Australia.
The process is done in three easy steps. Prior to using the wizard it is advisable you register an account first, although you can also register an account during the process.
The first step is to type in your trade mark if it is a word or forms a part of an application where a word is combined with another logo (i.e. a combined application).
If your application includes a logo, then you will have to upload this. Note that IPONZ will only accept GIF or JPG formats whereas IP Australia will only accept JPEG, PNG or TIF files.
How do I select my goods and / or services?
To figure out which goods and/or services are relevant for your trade mark, you can use our trade mark application wizard to select them. Note that the system that classifies the goods and services is not always logical. For example, surfing wetsuits can be found in class 25, but diving wetsuits are in class 9. Processed kiwifruit is in class 29, and fresh kiwifruit in class 31.
Each class covered by your trade mark application adds an additional fee made up primarily of official fees from the registry. The TMJAM trade mark wizard will outline the addition of these fees in the panel above the selected goods / services, i.e.:
If you’re not sure that you’re doing it right, and you want us to provide you with the goods and services you should file under, contact us. Note also that sometimes your goods or services may not be indexed.
Although our wizard has around 120,000 items indexed, there are still many gaps in items that exist out there in the real world.
If your goods and services do not exist in our database we are happy to file an application direct to the IP office for you at no additional cost.
No, not for the filing stage. If you pay with your credit or debit card we will not keep this on file and no further charges will be payable without your consent.
We will not charge you an acceptance fee, a registration fee, a fee to forward you an objection, a fee for scratching our heads, nor any other miscellaneous or imaginative fees.
We don’t do disbursements, charging by the hour, or invoicing you for phone calls. Why? We’re not lawyers. We’re TMJAM!
We’ll also help you overcome objections to your application for free if they are related to the goods and services you filed your trade mark under (as lawyers say, a ‘specification objection’). If you want to pay, we suggest you find a lawyer, they’ll charge around $350!
If you need to add goods and services to your application, and they aren’t within the parameters of your original application, the IP Office will charge you official fees (this is called adding classes to your application).
If your trade mark application faces a more serious objection (for example there are conflicting marks on the register, or your trade mark is 'descriptive' or 'lacks distinctiveness'), there may be a cost to file a response. We’ll let you know your options before we proceed.
When your trade mark registration needs renewing (think 10 years away), we charge a simple renewal fee. We push the same buttons as the lawyers do, and charge you less.
Does TMJAM provide legal services?
TMJAM does not provide legal services. If your trade mark matters are contentious or you need legal advice, we’re more than happy to recommend a firm or lawyer to you. Why? We’re not interested in getting in fights. We prefer to help our clients achieve great things like filing their trade mark applications!
Where can I use the TMJAM services?
We’re global but local. Use our online form to file trade mark applications in New Zealand and Australia. If you’re interested in transferring ownership of your trade marks, or filing overseas, we can help too. Contact us here.
Why should I register my trade mark?
Why? Why not?! Importantly, securing a trade mark registration adds value to your business. You’ll have better peace of mind knowing you’ve established a monopoly over words, logos and branding. Whether you’re a start-up, a small company or a big multinational, a trade mark registration evens the playing field. Not convinced? Check out the story of why Rogue Society gin rebranded to Scapegrace gin.
Also, a trade mark registration is a legitimate form of personal property. You can licence, assign and mortgage your registration. If you want to sell your business, potential buyers won’t be impressed if they can’t buy the legal rights to your brand. Your brand could be your most valuable asset.
Registration also means you can use the ® sign. You can warn competitors that you’ve got a trade mark, so they better not ‘steal’ it or there will be consequences.
Ultimately, a trade mark registration is key to your business risk mitigation strategy. Don’t have a strategy? Better apply to register your trade mark quick!
Is trade mark registration compulsory?
It’s not compulsory. But it provides you with the right to sue for trade mark infringement. You don’t get this right just by registering a company name.
A trade mark registration is also a defence against other people’s allegations of trade mark infringement.
From a legal perspective, you need to select a trade mark that is ‘distinctive’. What this means, is that your trade mark should be able to distinguish the goods or services your business provides from your competitors.
To come up with a distinctive trade mark, make sure that it’s not descriptive of your business activities. ‘Chocolate Cakes’ for your cake company is terrible name. ‘Sugar Hit’ is slightly better, because it’s suggestive only. ‘Best Chocolate’ is a no, because that’s laudatory. But if you want to choose a really good brand, come up with a fanciful or made up name [insert yours here]. Think Apple for Computers, or Nike for athletic wear. Now we’re talking.
Contact us if you have come up with a new brand, but you’re not sure how strong it is from a legal perspective. We’ll give you our opinion on this for free!
A helpful assessment for trade mark distinctiveness is the split between classes of (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The table below sets out the scales you might be looking for to make sure your trade mark is a good jam!
| Generic | Descriptive | Suggestive | Arbitrary or Fanciful |
|---|---|---|---|
|
The common name for the the goods or serviced for which the product is used.
Not capable of inherently serving the function of distinguishing goods or services of a business from the goods or services of another businesses (ie the trade mark H2O for the goods “spring water”). Will never be afforded legal protection by registration since it can never function as a trade mark. Generic trade marks also contemplates trade marks that although once distinctive through inaction or otherwise have lost their capacity to act as a trade mark. Examples include:
|
A descriptive trade mark is one that by its plain meaning refers to the nature of or an aspect of the goods or services for which registration is sought.
Descriptive trade marks are prima facie ineligible for registration but can be registered if it can be shown a distinctive character has been acquired through use (“acquired discintctiveness”). Examples of descriptive trade marks could include:
|
A trade mark is considered to be allusive if it makes reference to certain characteristics of the goods or services in an indirect way or through a mental association process which requires a special effort on the part of consumers who are expected to transform a suggestive or emotional message into a rational evaluation.
Examples of suggestive trade marks might include:
|
An arbitrary of fanciful trade mark is one that is made-up or has no meaning or relation to the goods or services for which registration is sought. Arbitrary or fanciful trade marks are inherently registrable. The term “fanciful” is applied to words invented solely for their use as a trade mark (eg a neologism ) whereas an “arbitrary” trade mark is a common word applied in an unfamiliar way. Examples would include the following:
|
This is important. Remember SELLOTAPE and TRAMPOLINE? These trade marks are no longer, they fell victim to ‘genericide’. Basically, these names were used in a way that lead them to becoming generic, and not necessarily being attributed to one particular business. These names no longer function as trade marks, but as adjectives for sticky tape and fabric stretched between a frame using coiled strings.
So, it’s important to use your trade mark as follows:
Perform a Google search on cats (not Google cats).
Drink a Carlsberg beer (not drink Carlsberg).
Call on your Samsung phone (not call on your Samsung).
Contact us if you want us to check that you’re using your trade marks correctly. We’ll give you our advice for free.
Before you apply to register a trade mark, we always recommend trade mark searches first. This is because your trade mark application will be objected to if it conflicts with an existing trade mark on the register which has ‘priority’, and covers the same or similar goods and services.
Searching may save you time and money in the meantime, as it helps prevent re-branding or worse.
TMJAM offers identical searching as well as similar searching, and our prices start from $50.
We can search in New Zealand, Australia, The United States, Canada, the European Union, the United Kingdom, Singapore and Hong Kong. Contact us for a tailored quote and recommendations.
What happens if I get an objection or opposition?
If your application is not objected to by the IP Office, or if we overcome any objections raised, it will be accepted.
Following acceptance, your application will be registered after approximately 6 months following the filing date, as long as no third parties oppose the acceptance of your application. Third parties have a limited amount of time from publication of acceptance by the IP Office (not the acceptance date) to oppose your application.
The opposition period in New Zealand is three months, and in Australia, two.
Don’t be too alarmed, the chances of a third party filing an opposition are low. In 2016, 22,034 applications were filed in New Zealand, and only 196, or less than 1%, were opposed.
What happens if my trade mark application is registered?
Your application will mature to registration if it passes the opposition period, and a Registration Certificate will be issued. In New Zealand only digital registration certificates are issued.
Following registration, you will be able to use the ® symbol alongside your trade mark and are eligible to sue parties for infringement.
Can my trade mark registation be reversed?
Yes, by invalidation, removal or revocation by a third party.
Make sure that you use your trade mark registration in relation to ALL of the goods and services it covers, so that you build up strong use rights, and prevent your registration from being attacked because it’s not in use.
Your trade mark registration can be renewed 10 years after the application date, and renewed indefinitely for further periods of 10 years at a time.
You can renew your trade mark using our renewals tool. You can pay with your credit card and complete the renewal process online.