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It can be extremely frightening if another business begins using your name to sell products or services. However, in New Zealand, there are several steps you can take to defend your business’ name and reputation. Under the Fair Trading Act in New Zealand, businesses cannot mislead customers, such as by copying a competitor’s name or branding. You should take prompt steps when you become aware that someone may be doing this with your business’ name. 

This article sets out:

  • ways to check your intellectual property rights;
  • how to use a cease and desist letter; and
  • the option to sue the other business for breach of the Fair Trading Act

Checking Your Intellectual Property Rights and Recording Evidence

It can be tempting to directly message or send a letter to another party who uses your business name. However, ensure that all of the facts and key information are in order before contacting the offending business. Before you do anything, make sure that your own intellectual property registrations and protections are in place. You should also check to see that the registrations for your business name have not expired. 

You should also document the offending business’ activities and how they are using your name or other branding. Take pictures, screenshots and any other evidence of what the other business is doing and where your name appears. Later, if the other business does not back down, you may need to show that your business’ brand is well-established and that customers or clients are being misled by the inappropriate use of your name or reputation.

Sending a Cease and Desist Letter

You may be confident that another business is misusing your business name, such as to sell products or services. In that case, you should consider sending the business a cease or desist letter. The objective of these letters is to put the other party on notice that they are breaching your intellectual property rights and that you are formally requesting that they stop using your business name and other branding. In other words, they need to “cease” using your name and “desist” immediately. 

You should strongly consider getting a commercial lawyer to draft this letter on your business’ behalf. A cease and desist letter is a formal legal document, and it should set out your intellectual property rights and claim comprehensively and persuasively. A successful cease and desist letter will alert a business that it does not have the rights to the name they are using. Alternatively, if the business is already aware of that and uses it anyway, it can frighten it to stop.

Taking the Other Business to Court

If a cease and desist letter does not succeed in making the other business stop using your name, you may have little option but to take the business to court. 

There are several options to consider depending on the nature of the specific circumstances of your case. The other business may well be breaching your intellectual property rights which you can look to enforce. One option is a claim of passing off. You can use this claim to protect unregistered intangible assets like your business’ reputation. In essence, in a passing off claim, you will be arguing that the other business is passing off their products or services as yours and that this misrepresentation is causing your business loss.

One common way of taking the other business to court in New Zealand is under the Fair Trading Act. The Act protects consumers from being deceived or misled when purchasing products or services (among other protections). Suppose another business uses your name so that customers, clients, or other purchasers could be misled into thinking that they are buying your business’ products or services when they are not. In that case, this is usually a breach of the Fair Trading Act

Key Takeaways

It can be a horrible experience to find out that another business is using your hard-earned reputation and goodwill to sell products and services. You should take action quickly by:

Resolving the dispute outside court is always preferable, if possible, to save time and money. However, these formal legal venues can help to force the other business to stop if they otherwise refuse to stop using your business’ name. If you want to know more about how to respond to a business using your business’ name or branding, contact LegalVision’s IP lawyers on 0800 005 570 or complete the form on this page.

Frequently Asked Questions

What should you do if another business is using your name?

The first thing to do is check that your intellectual property rights are intact (and have not expired). Next, gather evidence about how the other business is using your business name. Then, you should get legal assistance and send the business a cease and desist letter.

Is using another business’ name a breach of the Fair Trading Act?

Yes, using another business’ name and branding is likely to breach the Fair Trading Act if customers are being misled or deceived.

What is passing off?

Passing off is when a business passes off their own products or services as another business’ (typically with a strong reputation or brand). This can amount to a claim under New Zealand common law.

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