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Intellectual property rights protect the creations or property of your mind. You can own intellectual property like you would physical property and deal with it similarly. There might be different types of IP associated with your app, which you should protect appropriately. However, you may also decide to use another party’s intellectual property, such as their trade marks. The law has specific rules about handling this intellectual property, so you must know what is and is not allowed. Therefore, this article will provide some background and explain whether you can use a trade mark in your app in New Zealand.

What Are Trade Marks?

A trade mark refers to something unique that identifies your business and connects it to the goods or services it provides. It exists as a ‘badge of origin’, serving as a way to show your customers that you are the provider of the good or service. As such, trade marks can be a vital part of brand recognition, and many businesses follow up on trade mark infringement seriously.

Trade marks can include:

  • words;
  • shapes;
  • colours;
  • phrases;
  • logos;
  • symbols;
  • smells; 
  • sounds; or
  • any combination of these.

For instance, many businesses will register trade marks to protect their business name and  logo.

Notably, there are two kinds of trade marks. These are registered and unregistered trade marks. Businesses can have both, but registered trade marks are an official record of a business’ ownership. As the registered owner, that business will have greater powers available to them if they wish to pursue someone for trade mark infringement. 

The ® symbol in New Zealand indicates a registered trade mark, whereas the ™ symbol indicates an unregistered trade mark.

Using Trade Marks

If a person or business is the owner of a registered trade mark in New Zealand, they have the right to exclusively use that trade mark in New Zealand. As long as they use the trade mark in the form as registered, they have the exclusive right to:

  • apply it to their registered goods and services for labelling/packaging purposes;
  • use it in their advertising and promotion;
  • prevent others from using their trade mark;
  • access both criminal and civil remedies for trade mark infringement;
  • apply it to their business’ branding;
  • sell the goods or services registered under that trade mark; and
  • otherwise profit from or commercialise the trade mark.

As the owner, they also have the right to licence or sell their trade mark rights. Licensing refers to the process where they allow a third party to use their trade mark, according to the terms they set (usually in a licensing agreement or another similar contract). Usually, this is in exchange for royalties or licensing fees which the owner receives as compensation.

Trade Mark Essentials in New Zealand

Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.

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Trade Mark Infringement

Generally, if a third party uses a registered trade mark (which might be identical or deceptively similar) without the owner’s permission, then this could qualify as trade mark infringement. If you are not careful, using another business’ trade mark could invite legal action. This would largely depend on how you use the trade mark and for what purpose. 

As a starting point, it is best to avoid using another business’ trade marks in your app unless you have their permission (such as through a licensing agreement). However, there are some defences to trade mark infringement that you may be able to use.

Defences to Trade Mark Infringement

If you use another business’ trade mark without their permission, there are some defences that you may be able to rely on if they pursue you for trade mark infringement. The following table sets these out.

Trade Mark Registration Does Not Cover Goods or Services

When someone wishes to register a trade mark, they must specify the goods and/or services it applies to. If your use of another party’s trade mark falls outside the scope of the goods/services it is registered for, your use may not qualify as trade mark infringement.

Honest Practices

If you can prove that you honestly used the trade mark in a descriptive sense (which includes not trying to benefit from the trade mark’s reputation), then your use may not qualify as trade mark infringement.

Comparative Advertising

If you were using another party’s trade mark to compare your own goods or services within your app, this may not be trade mark infringement. However, you cannot be misleading, take unfair advantage of the trade mark’s reputation, or damage the distinctive nature of the trade mark’s reputation.

Note that the success of this will vary according to your specific case and the facts of your situation.

Key Takeaways

Generally, it is best to avoid using another business’ trade marks in your app, unless you have their permission. However, there are some cases where you might be able to rely on certain defences in response to a trade mark infringement claim.

If you need help with trade marks, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

What is trade mark infringement?

Trade mark infringement refers to when someone uses a trade mark that is identical or similar to yours without your permission. If this is the case, you have various legal options available to you.

Can I use another business’ trade mark in my app?

Generally, it is best not to use another business’ trade mark in your own work without the owner’s permission. In some cases, you may be able to, such as if you use it in your advertising as a point of comparison.

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