Article

By David McLaughlin | 14 September 2009

In past editions of Art All we've considered intellectual property issues by way of discussing Copyright and the wide ranging ramifications that this type of intellectual property has for visual artists. In this issue of Art All we will be considering another type of intellectual property that is also very important for visual artists, namely trade marks.

A trade mark is essentially something which is used to distinguish the goods or services of one business from another. Trade marks most commonly come in the form of brand names or logos although in practice a trade mark can in fact exist in the colours, smell, packaging or even music associated with a good or service. Examples of well known trademarks would include the word ‘Nike' as used by the well known international sportswear manufacturer as well as the Nike ‘swoosh' symbol which is used on all Nike clothing. The name ‘McDonalds' in relation to fast food restaurants as well as the golden arches symbol used by the McDonalds restaurants are other examples of well known trade marks. However, as we will discuss later, trade marks are not just relevant to large multinational corporations. Any person or business who produces goods or services for supply to others needs to think carefully about what particular trade marks they are using and the extent they should go to to protect these trade marks.

Trade marks distinguish the goods or services of one business from another and they essentially protect the value of the reputation that someone has built up in the goods or services they supply. This reputational value is often referred to as ‘goodwill'. Many international brands invest millions of dollars in building up recognition of their brand through high profile advertising and marketing. However you can equally come to establish goodwill in your own goods or services through the normal course of operating your business simply by people coming to identify some inherent positive quality in goods or services that are branded with your particular logos or business name.

Trade marks are just as relevant to anyone operating in the art world, whether it is on a small or large scale or as an artist or as an art focused business, as they are to a large international company. The reason for this is that if you do something and do it well and people recognise this, then straight away some part of your hard work has been converted into a better reputation for yourself in the market place (i.e. more goodwill in your brand). Once you start to create a better reputation for yourself in the market place then you need to be aware of two things. Firstly, ensuring that others do not try to piggyback on your hard work by adopting branding or names that are similar to your own, hence potentially misleading your customers into thinking that these other people are in some way associated with you and that their goods or services are of a quality equal to your own. This can lose you customers. The second issue you need to be aware of once you start building up the reputation or goodwill in your brand is ensuring that someone does not start to use branding or names similar to your own for products that are of a notably inferior quality. This can not only lose you customers but also affect the overall standing of your reputation, or rather the value of your goodwill. This can occur as customers who are mislead into using the inferior goods and services of this other person may never realise this person is not associated with you and consequently these customers will be less likely to use your goods or services in the future.

Once you begin to realise the value that does exist in your brand whether it be in relation to your work as an artist or the goods and services you supply through your art related business, it becomes easier to see the importance of managing and protecting your brand to maximise its value. It is here that trade marks prove vitally important.

There are essentially two types of trade marks. ‘Registered' or ‘Unregistered'. A registered trade mark is a trade mark that has been registered with the Intellectual Property Office of New Zealand ("IPONZ") (www.iponz.govt.nz) and is therefore recorded on the trade mark database maintained by IPONZ. An unregistered trade mark is a trade mark which although maybe being used by someone is not a trade mark that has been formerly registered with IPONZ. A registered trade mark will be followed by the symbol ‘®' to indicate it's registered status. The symbol ‘^TM' on the other hand can be used after an unregistered trade mark to indicate that although it is being used as a trade mark and you assert your ownership in this brand, the trade mark itself has not yet been formally registered. By law you can only use the ‘®' symbol once your trade mark has been formally registered with IPONZ.

In the next issue of Art All we will be continuing our discussion of trade marks and more specifically will be considering the advantages of formerly registering your trade marks as well as some of the restrictions on the types of trade marks that can be registered.

David McLaughlin is a specialist arts lawyer with Auckland law firm McLaughlin Law (www.mclaughlinlaw.co.nz). He can be contacted by email at david@mclaughlinlaw.co.nz or on 09 363 2738.
Disclaimer: This article is intended to provide a general outline of the law on the subject matter. Further professional advice should be sought before any action is taken in relation to the matters described in the article.