Commercial Law
Trade mark

Firstly, do you have a trade mark registration? 

If so, and if the other trader is using the same or a confusingly similar brand name in relation to the same or similar goods or services then it is likely you have the right to prevent the use and could make a request that the other trader immediately stop using your intellectual property.

However, if the other trader was already using the brand name before you filed your application, there is a chance that you will have to either accept that another trader using a similar brand name in the market place, or you could potentially negotiate with the other trader to see if you can come to some sort of pragmatic solution.

If you do not have a trade mark, the issue becomes a bit more uncertain. We have had situations where clients have been happily using brand names on their products, only to then receive a polite but firm “cease and desist” letter directing them to stop using the name because it infringes a trade mark registration they own that predates the first use by our client. In one particular instance, our client was using what appeared to be a really novel and unique name on a food product, only to be told they were infringing a trade mark owned by a major American company (a.k.a. a trade mark owner with big pockets for paying legal expenses and little interest in negotiating with a small New Zealand company). The main problem for our client was that they had spent a fairly hefty amount on graphic design and marketing for their product and had six months’ worth of packaging already bought and paid for. The task of having to delete every photograph or reference to the trade mark on their social media pages was tiresome, but re-educating their customers about the name change also proved to be a headache (same great product, just with a way better name …).

That is why we would always recommend carrying out thorough clearance searches before you set your heart on a particular brand name, and why it is preferable to obtain a trade mark registration for your cracking great brand names. It can save time, money and hassle down the track and give you peace of mind right from the start. We can help you conduct thorough research and investigate your ideas before your products or services are put to market and, once you have confirmed your brilliant brand name is available, we can help you with any trade mark applications you may wish to file.