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Bay of Plenty Business News June/July 2019

From mid-2016 Bay of Plenty businesses have a new voice, Bay of Plenty Business News. This new publication reflects the region’s growth and importance as part of the wider central North Island economy.

From mid-2016 Bay of Plenty businesses have a new voice, Bay of Plenty Business News. This new publication reflects the region’s growth and importance as part of the wider central North Island economy.

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BAY OF PLENTY BUSINESS NEWS <strong>June</strong>/<strong>July</strong> <strong>2019</strong><br />

11<br />

To consent<br />

or not to<br />

consent?<br />

That is the question: Whether ‘tis nobler<br />

in the mind to suffer the slings and arrows<br />

<strong>of</strong> consumer confusion, or to take arms<br />

against a sea <strong>of</strong> potential troubles and by<br />

opposing end them.<br />

“What on earth is this guy<br />

talking about?” I hear you<br />

say. I’m talking about to<br />

consent - or not - to registration<br />

<strong>of</strong> an identical or similar<br />

trade mark to yours.<br />

Let me explain. The New<br />

Zealand Trade Marks Register<br />

has become very crowded,<br />

such are the numbers <strong>of</strong> registered<br />

trade marks now on it.<br />

It has consequently become<br />

quite common for a person<br />

seeking to register a new<br />

trade mark to find their application<br />

to do so “blocked” by<br />

one or more previous registrations.<br />

To overcome this hurdle,<br />

the applicant must either convince<br />

the trade marks examiner<br />

at the Intellectual Property<br />

Office that their mark is<br />

sufficiently distinctive from<br />

those preventing its registration,<br />

or it must obtain consent<br />

from the owners <strong>of</strong> the prior<br />

registrations.<br />

At first glance, a request<br />

for consent does not seem a<br />

particularly difficult question<br />

to answer. However, the consent<br />

request involves consideration<br />

<strong>of</strong> a number <strong>of</strong> issues,<br />

not least because the person<br />

asking could be a wolf in<br />

sheep’s clothing.<br />

The issues a trade mark<br />

owner needs to consider<br />

include:<br />

If I consent, what is the<br />

impact on the distinctiveness<br />

<strong>of</strong> my trade mark? Is confusion<br />

among my existing and<br />

potential customers likely to<br />

result?<br />

If I consent, what is the<br />

potential effect on where<br />

my business trades now and<br />

where it may trade in the<br />

future?<br />

If I consent, and a problem<br />

arises in the future because <strong>of</strong><br />

how the other person has used<br />

their trade mark, am I prevented<br />

from taking action?<br />

If I don’t consent, will<br />

the other person attack my<br />

registration? Will they try<br />

and remove it from the Trade<br />

Marks Register to secure their<br />

registration?<br />

If I don’t consent, will the<br />

other person use their trade<br />

mark anyway, and if so, what<br />

is the impact on the distinctiveness<br />

<strong>of</strong> my trade mark<br />

etc? Do I need to try and stop<br />

them from using their trade<br />

mark?<br />

If I don’t consent, and I<br />

have to issue legal proceedings,<br />

what will those proceedings<br />

cost?<br />

If you receive a request for<br />

consent, therefore, consider<br />

all the possible ramifications<br />

before replying. Work out<br />

with (we recommend) the<br />

INTELLECTUAL PROPERTY ISSUES<br />

> BY BEN CAIN<br />

Ben Cain is a Senior Associate at James & Wells and a Resolution<br />

Institute-accredited mediator. He can be contacted at 07 928 4470<br />

(Tauranga), 07 957 5660 (Hamilton), and benc@jaws.co.nz.<br />

assistance <strong>of</strong> a trade mark<br />

lawyer whether ‘tis indeed<br />

nobler in the mind to suffer<br />

the slings and arrows <strong>of</strong> consumer<br />

confusion, or to take<br />

arms against a sea <strong>of</strong> potential<br />

troubles and, by opposing,<br />

end them.<br />

<strong>Business</strong> Defined Technology<br />

Join us for Yorb‘s <strong>July</strong> training seminars. We’ll show you how to get the best out<br />

<strong>of</strong> your Office 365 subscription and will deep dive into Micros<strong>of</strong>t applications.<br />

Additionally stay for lunch and hear why security has become a discussion for<br />

the entire business, and how to ensure your businesses can remain safe in the<br />

modern cyber frontier.<br />

From<br />

$149<br />

excl gst<br />

Highlights<br />

Maximise<br />

Office 365<br />

Register today, spaces are limited!<br />

Date: Wednesday 17 <strong>July</strong> <strong>2019</strong><br />

Location: Trinity Wharf, 51 Dive Crescent, Tauranga<br />

Morning Session: Think you know Office 365?<br />

Lunchtime Session: Security: People, Process, and Technology<br />

Afternoon Session: Deep Dive in Office 365 E.g. Master Microsft Teams and<br />

more<br />

<strong>Business</strong><br />

Security Tools<br />

<br />

Master Teams<br />

For information and to purchase tickets: www.yorb.tech/training-events

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