By On Your Terms and Loft Legal
Feb 2024

It was hard coming up with a great business name, but you think you’ve nailed it. It was expensive hiring a designer to create your logo, but it looks great. Now you want to make sure you’re the only business who can legally use them.

So how do you legally protect your brand? What rights do you get by registering your company name with the Companies Office? This blog discusses what legal brand protection is, how to put it in place and what to watch out for.  

 

What is brand protection?

To gain exclusive rights to your name, logo or anything else that identifies your business, product or service, you need to register a trade mark. 

In New Zealand, you register a trade mark with the New Zealand Intellectual Property Office (IPONZ).

It is also possible to gain rights in a trade mark over time by developing a reputation through use of the trade mark. However, this usually requires extensive use or sales, and it is more challenging to enforce an unregistered trade mark (compared to a registered trade mark). So registering your trade mark is always best.

Registering a trade mark is more formal protection and has several practical benefits.

I’ve registered my company name, will that protect it?

If you set your business up as a company, you’ll need to register your company name with the NZ Companies Office. You can also register your business with business.govt.nz to obtain a New Zealand Business Number (NZBN). You may also be able to register your business name as a domain name(s). Business owners often believe these registrations protect their name by giving them exclusive rights to use it.

However, registering your name in one of these ways only stops another business registering the same name or domain name on that same register. It doesn’t necessarily stop another business from registering a similar name to yours and does not automatically give you any right to prevent others using similar branding to yours.

While the Companies Office won’t allow a company name to be registered that is ‘identical or almost identical’ to another registered company, this will not provide enough protection for your brand. Names will be considered almost identical where the only difference is ‘Limited’, ‘Tapui’ or ‘Unlimited’ at the end of a name or the addition of the letter ‘s’. However, names that have other small differences, such as the addition of a year, number or a place, will generally be allowed. For example, let’s say you register the company name Blueberry Designs Limited and the domain name www.blueberrydesigns.co.nz. The Companies Office is likely to allow Blueberry Designs Wellington Limited or Blueberry Designs (2024) Limited to be registered. Another business could also register any other domain name you haven’t taken, such as www.blueberrydesigns.com. You can see how customers could easily confuse your business with a business with such a similar name, decreasing the value of your brand.

Instead, if you register a trade mark with IPONZ, you are given exclusive rights to use the name (or logo etc) for the category of products or services you register it in. This prevents other businesses from using the same or a similar name in relation to the same type of products or services.

It's essential to understand that the availability of a company name on the Companies Office Register doesn't guarantee registration of your business name as a trade mark. Separate criteria govern the registrability of company names compared to trade marks.

How do you trade mark a name?

First, you need to check the business name is:

  • not the same or similar to a trade mark already used by another business; and
  • distinctive – meaning it is not a word that describes goods or services in your industry or has some significance in the context – for example ‘Redcurrent’ is registered as a trade mark for the name of a gift store, but it couldn’t be registered as a trade mark for fruit.

In New Zealand, you can search on ONEcheck for trade marks, company names, domain names and social media usernames, which can help to identify other similar registrations or name uses. Once you’ve chosen your name, logo or other design, and you’re comfortable it is not similar to any other trade mark registered or used by someone else, you can apply to register your trade mark on the IPONZ website.

IPONZ charges $100 plus GST per class to register a trade mark. It takes at least six months to process your application and it will only be granted if the criteria (above) are met. A trade mark registration in NZ lasts for 10 years, and can be renewed for successive 10 year periods.

Trade marks are registered separately in different countries. So, registering one in NZ will only protect your name/logo in NZ. If you also want to sell your products or services overseas, and stop businesses in other countries from using your same or a similar name, you’ll need to register your business name/logo in those countries as well. 

What are the advantages of a trade mark?

Registering a trade mark for your business name or logo gives you exclusive rights to that name or logo for your products or services and prevents other businesses using the same or a similar name or design in relation to the same products or services. This allows you to build a recognized brand to encourage potential customers to purchase from you.

Registering a trade mark as a word (rather than a logo) can also help to stop someone from using that word in their advertising. For example, say you have trade marked ‘LEGO’ and a competitor displays the word LEGO in its Google ad text, you may be able to use the Google complaint process to stop the competitor doing this. You can do similar things if someone misuses your brand on social media pages, or in a domain name.

A trade mark registration is a valuable asset which:

  • provides exclusive rights to use the trade mark for the relevant products or services;
  • can be sold or licensed to others (meaning you can grant others rights to use the trade mark); and
  • can be enforced against others (it can help you stop others from using the same or similar trade mark for the same or similar products or services).

 

Key Points

Registering your business, company or domain name will not protect your brand’s identity sufficiently. In New Zealand, to obtain exclusive rights to a name or logo you need to register your trade mark with IPONZ. A registered trade mark helps to stop another business from using the same or a similar word or logo for similar products or services to yours, and, therefore, protects your valuable intellectual property.

If you would like help registering a trade mark, contact our intellectual property law firm partner Loft Legal, who offers a great fixed price for registering a trade mark on your behalf.

Also check out our Empowering creatives: how to protect your copyright blog. 

Loft Legal provides various intellectual property (IP) legal services, including filing and progressing of trade mark applications to protect brands, dealing with oppositions and general IP disputes, and general advice and education about IP.

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