VibePlus – the challenge to my trademark has been withdrawn

March 5th, 2013 by Di Heap Leave a reply »

I’m very happy to say that the “application for revocation” of my trademark “VibePlus” in New Zealand has been withdrawn.

 

VibePlus Logo

If you’ve read my previous post or know me you’ll know how upsetting this time has been.  In hindsight, challenging a trademark is regular business practice but I didn’t know that. I felt personally affected when I received a serious letter, a few days before Christmas, telling me that the owner of a vibration studio in a local gym, just a kilometer away, was challenging my right to my trademark. The grounds of the challenge (done through a business agent) was “Non-Use”. A quick check shows this means no use of the stated trademark for a period of three years (in N.Z. law).

Once I came down to earth again, after the unbelief that anyone could be so misinformed and not check up to see if the mark was actually in use, I set about defending myself. I quickly discovered  that the reason for the challenge to my trademark was because the challenging person’s chosen name was not accepted for registration in New Zealand because it was too close to mine and within the same classification.

A Note here: IP Consultants use the Companies Office website to check up on people and trademarks. I was told they don’t use Google. When I asked why I didn’t get much of an answer; they expect that if you have a trademark you’ll have a registered company but as I’m a Sole Trader the companies office search didn’t find me.  This possibly led to the IP Consultant believing it would be a simple process to have my trademark revoked. – Lazy research in my opinion!

I am gob-smacked that that’s all the checking up that’s done. I was told that a year previously a letter was sent to my home address (that’s the address for service for any matters concerning my trademark). I didn’t receive the letter and no other communication was made. I’m listed in the phone book and – this is the biggie – a search of my name or my trademark within New Zealand (and worldwide) brings up pages of information.  I’m quite “popular” to Google it seems.

Anyway, the legal process went ahead. I had  no idea what was required of me but encouraged by others I defended myself rather than employ an Intellectual Property Specialist. I was guided by letters from iponz (Intellectual Property Office New Zealand) and sought out advice where needed.  I had to submit a defense proving I actually was trading under the trademark “VibePlus” and within the class registered. The proof was there but setting it all out in the required legal manner and using the iponz website was a learning experience. Right at the start my iponz website LogIn didn’t work;  they’ve changed how its done so I had to get a new LogIn and Password, which then refused to work – I was feeling some frustration right from the start.

I completed the required processes and I refused to sign a letter from the agent for the person who was the applicant. That letter simply stated that I would agree to the other trademark being registered even though it’s quite similar to mine.  The letter allowed us to  both have what we wanted and work in our own businesses amicably. Sure, that sounds reasonable in principle but I was advised not to agree to it. There’s other challenges that could be made and I could risk losing my right to use my trademark –  by being nice I could have lost out.

The agent for the applicant against me contacted me by phone several times; the first time very pleasantly trying to achieve what he’d been employed to do. His manner changed when I stood up for myself.  He even rebuked me for emailing him – when that email was used to serve my Counter Statement, my defense against the application for revocation, a very proper use of email. Well, he obviously hadn’t bothered to read the mail.  I’d also sent the required papers by regular mail and the email was because the agent told me he was not at his regular office or town; in fact he was currently in my city, some 1400km away. In all I found his manner condescending but I understand he was employed to get what the other party wanted – their trademark fully registered, and mine was standing in the way.

In the matter of trademarks it’s first in, first registered. Simply put, the other person should have checked up (free to do and easy, online) before they ever started using their chosen name for their business.

When I first registered my trademark I was intending to buy a vibration training studio. For a few reasons that didn’t happen but I fully use the mark “VibePlus”. This website is just one such use. I have some machines that I lease out and I retail some product including Eggcel, pure eggwhite protein.

Some of the work that I do is free of any charge and that might have been a problem if I wasn’t also generating income, but I am so I was safe. There’s no way I’m ever going to give up my trade mark voluntarily, it’s known worldwide because of my writings and because I’m prepared to stand up to rogue marketers and supplier of vibration machines with fake specs.

At present my trademarked little business is an important but small part of what I do.  Alongside it is my employment at Vibra-Train, Auckland City. Any readers are welcome to come into the studio to visit and also can experience a free, first vibration training session.

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