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Choosing a unique business name is a way to distinguish yourself from your competitors and make sure that customers remember you. But what happens when you apply for trade mark registration of the business name you have been using, only to find that someone else has already done so? This article will:

  • explain the difference between business names and trade marks; and 
  • lay out some potential legal avenues for dealing with this issue.

What Is the Difference Between a Business Name and a Trade Mark?

When you first set up your business, you register for an NZBN, and if you are a company, you register your company name with the Companies Office. You should also choose a name for customers to identify you by. However, registration does not necessarily mean that other people cannot operate using your business name. When you register with the Companies Office, this means that other companies cannot use a business name identical to yours, but this does not mean that:

  • other companies cannot register a similar name;
  • businesses other than companies (such as a sole proprietorship) cannot trade using the same name; or
  • another party cannot use or register your business name as their trade mark.

For example, ‘LegalVision Limited’ and ‘LegalVisions Ltd’ may both be company names that could exist on the register simultaneously.

A trade mark is a kind of sign that represents your business. A trade mark could be your:

  • brand name;
  • logo;
  • slogan; or
  • product name.

If someone has applied to the Intellectual Property Office of New Zealand (IPONZ) for a trade mark registration and it has been approved, then they have the exclusive right to use that intellectual property. This means that, subject to some exceptions, they can bring legal action against anyone who uses their registered trade mark without their permission in relation to the goods and services covered by the registration. The registered owner of the trade mark could potentially send you a notice claiming that you are infringing on their rights. If you can establish that you were operating with your business name before they registered the trade mark, you have some options available to you.

Opposing the Trade Mark Application

If you find that someone has applied to register your business name as a trade mark, you may be able to resolve the issue by contacting them and trying to solve the matter amicably. Doing so could help you to avoid legal proceedings. Even if you cannot avoid legal proceedings, the fact that you attempted to negotiate could have a positive effect later on.

If the other party is still in the process of registering their trade mark, you can apply to IPONZ to oppose its registration during the opposition period. After IPONZ accepts an application for registration of a trade mark, there is a three-month notice period where third parties can raise any concerns they have about the trade mark.

There are a number of grounds you can use to oppose a trade mark’s registration. These include where:

  • the person applying for the trade mark cannot claim to be the owner of it;
  • using the trade mark would lead to deception or confusion in customers;
  • the applicant applied in bad faith;
  • the mark is non-distinctive;
  • registration of the mark would offend a significant amount of the community; or
  • the trade mark only describes the goods or services it covers.

For your business name, the first two factors are the most relevant. If you can prove that the applicant is not entitled to own the trade mark, or that the mark would likely cause deception or confusion, you could stop its registration. You could prove this by providing evidence that:

  • you have an established presence, using your business name, that existed before the other party applied for registration; and
  • the combined use of the applicant’s trade mark and your established business name would deceive or confuse customers.

Declaring the Trade Mark Invalid

If the trade mark has already completed the registration process and this notice period of opposition has passed, you still have options. You can apply to IPONZ or the High Court to have the trade mark declared invalid, for the same reasons as listed above.

However, to bring this legal action, you have to prove that you are an ‘aggrieved person’. To prove that you are aggrieved, you have to show that:

  • you are considerably disadvantaged in a legal or practical way by the trade mark continuing to be registered; and
  • you can point to a relevant date that this occurred.

Once you have done this, you can give reasons as to why this trade mark should be declared invalid. You should note, however, that you generally cannot bring this kind of action if the trade mark has been registered for longer than seven years unless it:

  • was registered through fraud;
  • causes deception or confusion;
  • is against the law; or
  • offends a large part of the community, including Māori.

Key Takeaways

When you are choosing a new business name, it is always a good idea to check if it is already in use and change it if need be. However, if you have been using your business name for a long time already and find that someone else has applied to register it as a trade mark, you have some legal options available to you. If you would like more information or help with your business name and trade marks, contact LegalVision’s IP lawyers on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a sign that customers can use to recognise your business. It is often a brand name, logo or slogan that is associated with your business.

What is the difference between a business name and a registered trade mark?

Registering your business name as a company stops other people from using it as a name for their company. However, this does not stop other kinds of businesses from using this name, or companies using a similar name, as a trade mark. A registered trade mark is a sign (such as a business name) that you have the exclusive right to own and use, preventing other people from doing so.

Can I register my business name as a trade mark?

You can represent your business name as a trade mark with the ™ symbol, but this does not register it. You have to apply to IPONZ to register your business name as a trade mark and gain the associated benefits of trade mark registration.

What do I do if someone else has already secured trade mark registration for my business name?

If someone is in the process of registering the trade mark, you can oppose it. If it has already been registered, you can apply to IPONZ to have the mark declared invalid if you can prove that they should not have the right to own that trade mark.

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