Region’s trademark taken over
Taranaki’s marketing and tourism agency has been caught short after losing its trademark catchphrase to a private individual.
Venture Taranaki (VT) registered the trademark Taranaki Like No Other at the New Zealand Intellectual Property Office (NZIPO) in 2005 and uses the slogan on its website, merchandise and promotional material, including the region’s welcome signs and flags.
But when the trademark was due to expire in 2015 VT failed to renew it – and someone else bought it.
New Plymouth woman Sarah Lee noticed the registration for the famous words had lapsed in May last year and quickly alerted former New Plymouth District Council chief executive Barbara McKerrow. After nine months, and numerous emails to McKerrow and one to Neil Holdom last December, still nothing had been done to secure the trademark’s use into the future.
‘‘So, Mum and Dad said they’d buy it for my birthday. I’d thought it’s better that I protect it or Chinese or Americans could have come in and bought it,’’ Lee said.
Lee registered the words Taranaki Like No Other with the NZIPO in January under two categories – downloadable video and audio files, and printed advertising boards of paper or cardboard for $150 per category, she said.
She also bought the taranakilikenoother.co.nz domain name for $35, which now links to Step Up Taranaki – a charity video project Lee is involved with.
Lee said VT was obviously not on top of things.
‘‘What upsets me the most is they get millions of dollars from the council a year to promote the regional brand and they’re not doing their job. What are the council giving them the money for? I’ve been talking to these guys for a long time, but they’re in denial.’’
VT boss Stuart Trundle said the regional trademark registration with the NZIPO had lapsed in error.
‘‘I am investigating how this has happened and taking immediate steps to ensure this does not happen again.’’
But though the registration had lapsed it wasn’t material from a legal perspective, he said.
‘‘We have already started the process of getting the registration back and because of our continuous use of the brand name, there should be no significant risk here. A lot of time and investment has gone into building up the value of the brand and Venture Taranaki will take whatever steps it deems necessary to preserve these legal rights for the benefit of the wider Taranaki community.’’
VT had sought independent advice, Trundle said.
‘‘We’ve validated our position and information – from our point of view we will take any action that is necessary for our community to protect our investment in our trademark.’’
However, he wouldn’t say what that action might be.
Lee didn’t know what she was going to do with the trademark but said she didn’t want a legal fight.
‘‘I just did it to protect the name. I’m going to sit and wait at the moment. VT are going to check it out legally. I have taken legal advice and this is registered with J Park, the top IP legal lawyers in the country.’’
Councillor John McLeod, who raised the issue at the performance committee last week, said VT had dropped the ball.
A lot of people use the trademark Taranaki Like No Other and now it was owned by a private individual, he said.
Councillor Murray Chong said he heard that the trademark hadn’t been renewed last year, but didn’t do anything about it because he understood McKerrow had been informed and it was all sorted. ‘‘I felt I was lied to in the meeting, which is a big concern. If it was anyone’s logo why did VT buy it in the first place?’’