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Trade mark rights are a kind of intellectual property right that can significantly benefit your business. However, you may not necessarily need to register a trade mark to take advantage of its corresponding powers. Therefore, this article will provide some background and explain how you can enforce unregistered trade mark rights.

What Are Unregistered Trade Mark Rights?

Trade marks serve as unique identifiers for your business. Customers use them to recognise your goods or services. As a result, a trade mark acts as a “badge of origin”, indicating to potential customers that your business is the source of the goods or services you provide. Notably, trade marks can include a variety of elements, such as:

  • words;
  • phrases;
  • shapes;
  • logos;
  • sounds;
  • colours; or
  • a combination of these.

In New Zealand, a trade mark is a kind of intellectual property that your business can exclusively own.

Notably, to take advantage of some kinds of intellectual property rights, you must officially register your ownership with the Intellectual Property Office of New Zealand (IPONZ). Trade marks are an example of this. However, you can have valid ownership rights in a trade mark without official registration. These would then be unregistered trade mark rights.

You can indicate your ownership over an unregistered trade mark with the ™ symbol.

Ultimately, you can use unregistered trade marks as part of your business’ branding without major issues. However, if another party contests your ownership or attempts to copy your unregistered trade mark, this can complicate matters.

Unregistered Trade Marks and Your Ownership

For registered intellectual property rights, IPONZ maintains a register of a business’ official ownership over those rights. However, in the case of unregistered trade mark rights, you cannot rely on this official record. Therefore, to take advantage of unregistered trade mark rights, you need to find some method of proving your ownership. You may do this by establishing that:

  • you have used your trade mark enough to build a solid reputation in the market; 
  • any other parties do not have a stronger claim to ownership than you do; and
  • customers recognise your business by your unregistered trade mark.

If you have been using your trade mark for a long time and have established a robust reputation in the market with your customers, your ownership rights are more easily provable. In particular, you have generated enough goodwill in your trade mark to make it a badge of origin for your business. Evidence you may use to back this up could include:

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

However, if another party has already registered a trade mark identical to or similar to yours, they may have stronger ownership rights.

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

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How Can I Enforce Unregistered Trade Mark Rights?

If someone copies your unregistered trade mark, or attempts to imitate your goods or services using it, you may have legal avenues available. With unregistered trade mark rights, the law grants you certain powers.

In any legal proceedings of this nature, you only have ground to stand on if the other party does not have legitimate rights of its own to use the unregistered trade mark.

As a result, once you can establish that you are the owner of an unregistered trade mark, you have two options for enforcing your rights. You can either bring a “passing-off” action or an action under the Fair Trading Act. In reality, you may try to claim protections under both. The paragraphs below set out the nature of both of these legal actions.

What Does Passing Off Mean?

Passing off is an illegal action in commercial law. Essentially, if another party tries to use your unregistered trade mark in a way that leads consumers to believe their goods or services are yours, then this is a misrepresentation. If you can prove that you have sufficient goodwill in that trade mark, and that the actions of this other party have caused you to suffer damage (or will do so), then this action may be applicable.

Misleading and Deceptive Conduct

On the other hand, the Fair Trading Act is a law that regulates how traders interact with their customers and each other. In particular, it prohibits misleading and deceptive conduct. If another party has lied and claimed your trade mark as their own, you may be able to bring a legal action under this law. However, unlike passing off, you do not need to prove that their actions have caused you measurable damage.

Despite this, both actions require you to have sufficient commercial reputation in your unregistered trade mark. You will need to provide evidence of your commercial reputation in Court.

Key Takeaways

You do not have to register a trade mark to gain corresponding protection rights. However, you do need to prove your ownership over an unregistered trade mark, and establish that you have a sufficient commercial reputation. Otherwise, you may not be able to enforce unregistered trade mark rights if another party copies or imitates your trade mark. Ultimately, trade mark registration puts you in the most advantageous position to protect your interests.

If you need help with protecting your trade mark, our experienced trade mark 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 a trade mark?

A trade mark is a kind of intellectual property. You can use it to identify your business’ goods or services as your own and differentiate your business from your competitors.

What is the difference between a registered trade mark and an unregistered trade mark?

Trade marks can be registered or unregistered in New Zealand. Registered trade marks exist on the official register maintained by the Intellectual Property Office of New Zealand, which acts as an official record of ownership. Unregistered trade marks do not have this same record, and owners will need to prove that they do, in fact, own this trade mark.

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