How can you own the word 'hello'? Or escalators, Barbie pink and onesies

Monday, 25 June 2018

Jandals. Escalators. Aspirin. The colour purple. Onesies.

You'd use many of these words as part of everyday conversation but all have been - or are still - subject to trademark protection.

News on Monday that My Food Bag has been threatened over its use of the word 'hello' by German food delivery firm HelloFresh has pushed trademark law into the spotlight.

So what makes a trademark? And what can you try to claim as yours?

* NZ accepts mānuka honey as trademark while Australia funds objection

* Long history of NZ trademark battles

First things first…

Trademarks can be acquired by registration or by use. That means, in New Zealand, that you either apply to the Intellectual Property Office, or you use a certain word or logo so much that it would be misleading for consumers if someone else did the same.

What is a trademark?

Ben Cain, senior associate at intellectual property law specialist James and Wells said a trademark should be thought of as a sign. 'It has to be able to function as a badge of origin.'

That could be a word, phrase, logo, sound, colour or shape. If it's a sound, it has to be able to be graphically represented.

Even everyday words like 'hello' can be trademarked - but it's how they are used that matters. You couldn't trademark 'hello' as a greeting but you could trademark Hello-brand pyjamas.

What can't you trademark?

If a trademark describes the goods or service, rather than signifying the brand, then it's unlikely to be allowed.

Previous attempts to trademark things such as 'New Zealand water' have been unsuccessful because they describe a product - and could equally apply to other items.

Intellectual property lawyers AJ Park say: 'Although it's tempting to pick a mark that tells consumers exactly what the product or service does, these kinds of marks are tough to assert ownership of.'

Alex Sims, associate professor in the department of commercial law at the University of Auckland, said: 'You can't have say just 'fresh' for food as others would want to use fresh to describe their good. Or 'Apple' if you sell apples, but Apple for computers is fine.'

'The danger with using common words and not inventing words - like Zespri, Fonterra, Xerox, Exxon and Viagra - is that others may use that trademark to describe their goods, or as here, to say 'hello' to their customers.'

She pointed to a case where a court was asked to decide whether a company referring to 'kettle' chips was infringing on a trademark or describing the type of chip.

They don't always stick…

If something becomes so widely used that its brand name is used in place of the description of the thing itself, the trademark can get wobbly.

This is true in the case of escalators and aspirin, though Cain said it was a hard thing to argue.

Anyone wanting to use the name would have to prove the trademark owner hadn't protected the trademark as best they could, or that their conduct had created an environment whether there was ambiguity.

Jandals, sellotape, glad wrap, onesies and bandaids are all trademarks that their owners are still trying to protect. The battle may be lost on velcro and trampolines.

Cadbury has been involved in ongoing court action over its protection of its purple packaging. Tiffany and Mattel have also trademarked colours - Tiffany Blue and Barbie Pink.