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New Zealand law losing online trade mark wars? 07 Apr 2015

New Zealand law losing online trade mark wars?

31 March 2015

The diminishing ability of traditional legal channels to protect businesses from brand jacking and dilution of trade marks online in New Zealand, means business leaders might need to start relying less on the law and more on smarter commercial decisions to protect their brand investments.

Intellectual property expert and lawyer, Theodore Doucas of Zone Law and Zone IP, an intellectual property law firm and consultancy in Auckland and Wellington, said New Zealand businesses are moving too slowly in identifying and coping with threats posed by the Internet.

“Businesses enjoy far less trade mark protection in the digital landscape where the law can be fairly impotent at times, and where it is far too easy for others to trade off their brand equity.

Mr Doucas said that brandjacking is alive and well in New Zealand not only by ‘typosquatters’ but also by brash competitors hijacking identical domain names.

“Typosquatting is where a competitor relies on typographical errors made by Internet users when inputting a website address into a web browser to divert them to their own website.

“We are now aware of competitors buying the exact trade mark name in a .co or .net domain name and filing a trade mark application in New Zealand, thereby temporarily legitimising their illegal rights. Businesses that rely on unregistered trade mark rights can take years through the courts to legitimise their rights whilst the competitor continues to divert business online and to trade off their rights.”

Mr Doucas said dilution of trade marks online was becoming more prevalent and smaller traders and service companies were particularly vulnerable.

“People continue to give their companies or products descriptive names – like Auckland Electricians – because this is also an online search term. The advice from some marketing experts is that this will help them to be found online more easily.

“The problem is anybody can use the words “Auckland Electricians” in their messaging, SEO and Adwords campaigns, because they are too generic to protect. Competitors can suggest affiliation with your brand or even assume your brand identity online to take advantage of your brand equity. All of these can be difficult to challenge legally.”

Mr Doucas said one of the most important things a company can do is to choose stronger, more distinctive brand names and to register those brand names as soon as possible.

He said that when issues such as brandjacking and dilution did arise, it was often cheaper and more effective to look for a business solution over a legal route.

Mr Doucas said New Zealand companies ignored the digital landscape at their peril.

“Our trade mark practise is a perfect example. We were the first New Zealand company to begin offering online trade mark services 7 years ago – as well as taking more of a business negotiation approach to resolving issues – and as a result our group of intellectual property companies has catapulted from nowhere to regularly being one of the top five filers of trademark applications for businesses in New Zealand.

“It is the Internet age and that means rapid change to established rules. To defend your brand you must be prepared to talk to people who practise smart, pre-emptive thinking,” Mr Doucas said.

Theodore Doucas, Principal