Overzealous trademark protection

sfSome companies, and unfortunately, some government funded organisations, have too much money in their legal budget. ?They end up harassing individuals over nothing at all

A Kiwi who uses a silver fern symbol on his Twitter account has been warned about copyright infringement by a government agency.

The New Zealander said he chose the fern for his profile picture and background because it was a “symbol of who I am”.

But last week he received an email from New Zealand Trade and Enterprise asking him to remove it.

“While it’s great promotion and we’re sure it’s unintentional, the Fern Mark is a registered trademark and unfortunately this use is breaching copyright,” the email said.

This happened to my wife a few years ago when we received a letter from a legal firm. ?

She had written a recipe on a web site she owned. ?The recipe was to make some cookies and it was aimed at 5-10 year olds. ?At some stage, the dough was to be put in some glad wrap.

Now, I’m deliberately saying glad wrap instead of plastic cling film or plastic food wrap. ?Because, according to the lawyers representing glad wrap, you’re not allowed to use the phrase “glad wrap” as it is trademarked.

The letter went on to explain that my wife had their permission to write glad wrap as long as it was written like this:

Glad WrapTM

It had to be capitalised and have a TM symbol at every mention.


Or face legal action.

We learned something from that however, and realised that it didn’t take much to ask for permission. ?So we went through the site and looked at other legal trip wires.

We found the image of a Buzzy Bee.

Now, the Buzzy Bee is jealously guarded, so to prevent another letter, we fired off an email asking for permission to use the image on the site.

What happened next was the other side of ridiculous.

About a week later, we received a framed printed full colour certificate giving us a license to display Buzzy Bee trademarked images or text on our web site.

They say it is better to ask for forgiveness rather than permission, and I personally don’t see there is any benefit to enriching legal firms with this level of nit picky trademark protection.

NZTE marketing director Nick Swallow said its silver fern was a registered trademark “and we need to be able to protect it”.

“If we don’t, we weaken our intellectual property rights, including the ability to enforce more serious commercially-based infringements.”

Mr Swallow acknowledged that use by individuals was usually with “the best of intentions”.

“When we come across this, we get in touch to explain its status and why it is available only for licensed use.

“Generally we find individuals don’t realise it is a registered trade mark and they are happy to comply.”

I look forward to various notices from trademark owners simply because of this article due to the reasons outlined by Mr Swallow – not doing so would dilute their legal standing in cases that present a more serious breach of the trademark.