You can acquire rights to a trade mark through either use of the mark in trade or by registering a trade mark at the Intellectual Property Office of New Zealand (IPONZ). Registering your trade mark provides you with national rights that are more easily enforceable than relying on use rights.
However, both of these trade mark rights are territorial in nature. So if, for example, a business has a trade mark registered in Australia or the USA that doesn’t give them any automatic right to use or apply to register the mark in New Zealand.
This means that if an established off shore provider wants to offer their branded financial products in New Zealand, they need to check firstly that the brand they want to use in New Zealand is freely available to use, and secondly they should seek protection for that brand at IPONZ.
To assess whether a brand is freely available to use in New Zealand requires a legal clearance search to be conducted, which considers whether an identical or confusingly similar mark is already registered at IPONZ, and also reviews the marketplace to assess whether any other entity is already using the mark in trade in New Zealand.
What can you do to prevent use of identical or similar brands in New Zealand?
If your business becomes aware of an off shore provider offering a branded financial product in New Zealand that is very similar or identical to your brand, what can you do?
First you need to get legal advice to assess the strength of your legal position with regard to your own brands. If you have registered your brand as a trade mark already, you will be in a much better position than if you haven’t. If you haven’t registered your brand, you will need to prove an extensive reputation in your brand through use. This will only give you rights in the geographic areas where you’ve used the mark. In comparison a registered trade mark provides you with exclusive rights to the brand nationally.
In addition, consideration needs to be given to the similarity of the marks, the similarity of the goods or services the marks are being used on, and the trade channels through which both businesses operate, to assess whether consumer confusion from use of the new brand is likely.
If your legal position is strong, it may be appropriate for a ‘cease and desist’ letter to be sent to the business using such confusingly similar brand in New Zealand, and this may be sufficient to reach the desired outcome. Alternatively the dispute may be resolved commercially by discussion between the parties (or their lawyers). If not, litigation may be necessary. Any of these outcomes is easier, quicker and cheaper if you have registered trade mark protection for your brands.
If you want a clearance search conducted to assess if a brand is available to freely use and register in New Zealand, or if you want advice on a concerning similar mark being used in trade, give one of our IP specialists a call.