Want to Make your Mark? Register It!

Published by Barbara Beck on October 06, 2016

Does your business have a trade name or do you have a branding idea for a new business venture? If so, you have some homework to do. You will want to:

  • Make sure that the name/brand isn’t already used by someone else
  • Protect the name/brand so that you have exclusive rights to use it.

Too often, a business owner tells us that their trade name or brand is being challenged because it “belongs” to someone else. When this happens, the business owner will be faced with a commercial decision: change its brand or fight the challenge. Either option is costly and neither is satisfactory.

A savvy business owner will investigate its trade name or brand before it uses it in the marketplace. This will ensure that the intended name is not the same or similar to another name already protected by trade mark registration. Likewise, it will give the opportunity to secure a trade mark registration so no one else can use the name in your business industry.

The Intellectual Property Office of New Zealand (IPONZ) holds the database of all registered trademarks (and other intellectual property rights) in NZ. If you want to check on the likely availability of a trade name or brand, you can conduct your own search, or IPONZ can do it for you, or you can have a lawyer assist you. The IPONZ website https://www.iponz.govt.nz/ is fairly user-friendly and you may want to see if you can access information relating to relevant registrations.

There are some “fine print” issues that you will want to become familiar with, such as the effect of the goods and services classifications to which trade names apply and how to determine if your trade name is “different enough” from registered competing trade names. And, you need to understand that the mere absence of a similar registration does not mean that your trade name can be registered, as there are other considerations that determine whether a trade mark application will be accepted.

There are some “fine print” issues that you will want to become familiar with, such as the effect of the goods and services classifications to which trade names apply and how to determine if your trade name is “different enough” from registered competing trade names.

Barbara Beck — WRMK Lawyers

If there are no competing registered trade names, then you can apply to IPONZ online to register your brand or trade name. Again, you can do this by yourself or you can have a lawyer help you. There are multiple questions to consider, and the answers will depend upon your business particulars and your personal and business asset structure, as well as the trade mark requirements (you can look through the IPONZ Trade Mark Guidelines.) IPONZ charges an application fee of $150 per class plus GST.

Within 3 weeks, IPONZ will review your application and provide you with preliminary acceptance (subject to the advertising period of 3 months) or with an objection to your application. If IPONZ raises an objection, you will have the right to respond and explain your position.

A cautionary note: a company name does not offer protection of ownership for that name; only a trade mark registration provides the right to the exclusive use in NZ of that name.

The best way to protect one of your most valuable business assets – the trade name, the brand – is to secure trade mark registration.

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