While registering your business’s trade mark is generally a good idea, you also have legal protections available to you if your trade mark is unregistered. A trade mark can be a variety of things, including a:

  • business or product name;
  • logo;
  • slogan;
  • colour;
  • shape;
  • sound;
  • smell;
  • taste; or
  • combination of these.

You need to make sure that your trade mark can be represented graphically, and distinguishes your goods or services from another person’s. If handled correctly, your trade mark is a valuable asset that can help grow your business. However, if a dispute arises regarding your trade mark, how you go about resolving that dispute will vary depending on whether your trade mark is registered. This article will explain the difference between registered and unregistered trade marks and how they both operate in the law.

What is an Unregistered Trade Mark?

A trade mark can be a sign or logo that your business uses to identify and distinguish itself from other businesses in the market. You can have ownership rights in a trade mark even if you have not officially registered it. You can identify an unregistered trade mark by the ™ symbol. To have ownership rights for an unregistered mark under the law and be able to protect those rights, your trade mark should:

  • have been in use for a long enough to build a reputation in the market; and
  • be easily identifiable by consumers as representing your brand.

The more established your reputation is, the stronger your rights are. When you pursue legal action regarding unregistered trade marks, you rely on the goodwill that your trade mark has generated while it has been in the market. Evidence of this could include:

  • customer testimonials;
  • sales and advertising figures; 
  • newspaper and journal articles about your business; or
  • reviews of your products using your trade mark.

What is a Registered Trade Mark?

A registered trade mark covers the same content as an unregistered trade mark, except you have applied to the Intellectual Property Office of New Zealand (IPONZ) for registration, and they have approved it. IPONZ will generally approve your trade mark registration if it is:

  • sufficiently distinctive and original; and
  • not likely to be confused with already existing trade marks.

People can search a public register for your trade mark, and the ® symbol used alongside a trade mark indicates that is it registered. When you register your trade mark, this grants you the exclusive ownership of it related to the goods and services it covers and all of the rights attached to that ownership.

Therefore, you can dictate how others may use your trade mark and pursue legal action against those who do so against your wishes.

However, you should note that these rights only apply to your trade mark in NZ, because you registered it here. When you register your business or company name, this does not qualify as registering them as trade marks.

Enforcing an Unregistered Trade Mark

If someone else tries to use your unregistered trade mark, you have some legal options available to you if you want to stop them from doing so. You can pursue them legally by bringing an action under:

  • the Fair Trading Act (FTA); or
  • a claim of ‘passing off’.

Both avenues apply to people who have misled or deceived customers by using your trade mark, implying that they have the rights to use it when they do not.

However, you need to prove that you have sufficient rights in your trade mark to pursue legal action because it is unregistered. You do this by establishing that:

  • your trade mark has sufficient reputation in the geographic area where the other party used it;
  • your trade mark applies to the type of goods and services the other party used it for;
  • continued use of your trade mark in this way will (or will likely) confuse customers;
  • such confusion will (or will likely) lead to a loss for your business, or something similar; and
  • the other party does not have any legitimate right to use your trade mark.

Enforcing a Registered Trade Mark

Comparatively, pursuing legal action regarding your registered trade mark is a much more straightforward process, and there is a higher likelihood of success. The mere fact that your trade mark is registered is proof enough of ownership. That gives you the right to pursue legal action against people who use trade marks similar or identical to yours on the same goods or services as you do. It is against the law for someone to do so without your permission.

Key Takeaways

You do not necessarily have to register your business trade mark, because unregistered trade marks still have legal protection. However, it is much more challenging to prove you have sufficient rights in an unregistered trade mark if someone else tries to use an identical or similar one. Registering your trade mark offers greater legal protection and a more straightforward process for dealing with people who try to use it without your permission. If you would like more information or help to decide whether to register your trade mark, contact LegalVision’s New Zealand IP lawyers and attorneys on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

What is an unregistered trade mark?

An unregistered trade mark is a sign that you can use to represent your business. It could be your business or product name, or a logo. This kind of trade mark is not registered with the Intellectual Property Office of New Zealand (IPONZ).

Can you use an unregistered trade mark?

You do not have to register your trade mark to use it in your business dealings. But, this can leave you open to legal troubles. If you find someone else using a similar or identical trade mark, you can still try to make them stop using legal action, but this can be a long and expensive process.

How do you register a trade mark?

You can register your trade mark by applying to the Intellectual Property Office of New Zealand (IPONZ). You should make sure that someone is not already using a trade mark identical or similar to yours before you do this. Your trade mark application is more likely to be approved if your trade mark is distinctive and unique.

Should I register my trade mark?

Registering your trade mark means that you have exclusive ownership rights of this intellectual property asset. You can stop other people from using trade marks identical or similar to yours, and sell your trade mark as a business asset.

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