DIY intellectual property

Yet registering a trade mark is a lot easier, and a lot cheaper, than many people think.

Carroll is business development manager of The Intellectual Property Office of New Zealand (IPONZ): a branch of the Ministry of Economic Development.

Certainly, once you embark on a global campaign to protect your brand, it’s easy to spend upwards of $3,000 per country.

This covers legal advice for preparing and filing each trade mark application.

It can also cover associated issues such as investigating potential offshore partners and IP clearance checking – including how your brand will be pronounced or transliterated in foreign language markets.

The money would also go towards gauging the best way to structure partners’ companies, or the terms of a commercial joint venture or production arrangement.

Exporters in knowledge-based industries need to keep these factors at the front of their business plan.

Try self-service

But business people can do a lot of the basic processes themselves.

Companies looking to establish a brand, or protect their inventions and product line design features, will typically start by filing trade mark, patent and design applications where their business headquarters are based.

Applying for registration in New Zealand helps to establish ownership.

It also provides date priority when it comes to examination here and in other countries that have signed the Paris Convention.

The deadline for filing what are known as ‘convention applications’ is six months for trade marks and designs, and 12 months for patent applications.

You can apply to register a trade mark online and learn about the content of patent specifications.

This will cut down on legal drafting costs.

IPONZ has a lot of clearly written, accessible guidance on its website.

It offers a trade mark search and preliminary advice service for just $45.

This is a first step towards discovering if someone already has a similar trade mark or whether your brand is distinctive.

You can use IPONZ's online information and class search engine to prepare your own trade mark application and file it online: without professional help.

All going well, this will only cost IPONZ's $112.50 per class fee, from application to registration, which lasts 10 years.

You can then renew the registration in 10-year blocks.

IPONZ’s records show that between January 1, 2007 to June 31, 2008, 10,854 trade mark applications were filed online.

This compares with 1,762 offline applications.

Most of the trade marks (6,305) filed via the IPONZ website were submitted by the applicant directly, rather than through an appointed agent (typically a lawyer).

Of the 1,762 paper applications, 353 were filed without an agent.

IPONZ recommends that you get professional help when drafting patent specification documents and preparing first-time design applications.