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Is your trading name protected?

Ponder this scenario: Your business makes and sells widgets. When you set up your business, you register the company name Nomad Widgets Limited and the domain name. You invest in White and Yellow Pages directory listings, spend money on shop and vehicle signage and some flash new staff uniforms.

Business is ticking along nicely - the order books are filling up and you are thinking of hiring extra staff. One day you get a letter from some lawyers saying that you can’t use the NOMAD name anymore. Apparently their client has registered a trade mark for the NOMAD name which covers widgets. Turns out they have the exclusive right to use NOMAD for widgets and can stop you using the name.

How can this be? What about your company name and domain name? They give you the exclusive right to use the NOMAD name - right?

Wrong! This is a surprisingly common misconception.

Only a registered trade mark can provide the exclusive right to use a name in New Zealand.

So what’s so special about trade mark registration and how are they different from company and domain name registrations?

Trade marks
A trade mark is a distinctive sign used by a business to identify itself and its products or services to consumers.

The trade mark registration system gives the owner the exclusive right to use the trade mark in New Zealand on particular goods or services. It also gives the owner the ability to stop another business from using or registering the same or a confusingly similar trade mark on the same or confusingly similar goods or services.

Company names
A name is given to each company that incorporates in New Zealand. However, company name registration provides limited protection for that name. It will not prevent someone else using or registering your company name as a trade mark. This is because the Registrar of Companies does not check if the name you have chosen infringes a registered trade mark.

Domain names
All computers on the internet have a unique identifying number called an Internet Protocol (IP) address. The IP address is what a computer uses to find an internet site. Unfortunately, these IP numbers are not easy for people to remember. Therefore a domain name is the unique name that matches with an IP address.

Like company names, registration of a domain name does not guarantee the name is free to use. This is because authorised domain name registrars do not check to see if the name chosen infringes a registered trade mark.

What should you do to protect yourself?
Ideally you should carry out checks to ensure the business name you want to use is available before you start trading. If only Nomad Widgets Limited had thought of that first!

Checks should include a search of the Intellectual Property Office of New Zealand trade mark records to see whether any identical or confusingly similar trade marks are registered for the same or any similar goods or services. If the name is available, the next step is to apply for registration as a trade mark.

If you have not yet taken steps to register your trading name as a trade mark, contact us for advice.

Damon Butler

Advertising is the life of trade

If you are in business, you will undoubtedly advertise your products or services at some time using one or more of a number of advertising mediums like newspapers, radio, television or the internet.

Like any industry, advertising needs to work to standards and codes that ensure the rights of consumers are protected.

The Advertising Standards Authority has written Advertising Codes of Practice. The media, advertisers and communications agencies are committed to upholding these codes. If you advertise, you should be familiar with the content of the codes that apply to you and your advertising.

There are thirteen codes covering the following:

1. Advertising Code of Ethics
2. Code for Advertising to Children
3. Code for Comparative Advertising
4. Code for Environmental Claims
5. Code for Financial Advertising
6. Code for Advertising of Food
7. Code for Advertising Gaming and Gambling
8. Code for Advertising Liquor
9. Code for People in Advertising
10. Therapeutic Products Advertising Code
11. Therapeutic Services Advertising Code
12. Code for Advertising Vehicles
13. Code for Advertising of Weight Management

Despite greater awareness of the codes and access to advice on how the codes work, many businesses are still breaching the codes. So far in 2007, 265 decisions have issued on complaints received. This includes decisions not to consider the matter further.

It is expensive and time consuming to revise advertising. Get in right at the outset. All advertising should be vetted to ensure that it complies with the relevant codes. Other legal considerations may also come into play with non-compliant advertising. We have the expertise to assist you get your advertising right.

Corinne Blumsky

The right way to sign a deed

When our clients want to assign their trade marks, we usually prepare a “deed of assignment” for the parties to sign. The key difference between a deed and a simple contract is that consideration (usually payment) is not essential in a deed.

But when you use a deed to assign a trade mark, the deed must be signed properly.

If you are an individual, you sign the deed before a witness who also signs the document.

When a New Zealand company signs a deed, it must be signed as follows:

• If you are the only director of the company you can sign the deed before a witness (who also signs).
• If the company has two or more directors, then two directors of the company must sign the deed (no witness required).
• If you are not a director you can only sign the deed if you are authorised to do so under the company’s constitution. If you are authorised, you can sign the deed before a witness (who also signs).
• If you are appointed by power of attorney under Section 181 of the Companies Act, you can sign the deed on behalf of the company but you must provide a certificate confirming, amongst other things, that your appointment has not been revoked.

Before you sign a deed of assignment of a trade mark, make sure you qualify to sign. If you qualify, make sure you sign the deed as set out above. If in doubt, give us a call.

Dan Winfield

Bio of the month: Victoria Watts

Victoria is a solicitor in the Auckland office, specialising in trade marks. She helps clients to prosecute and enforce their trade marks and gives commercial advice on a range of trade mark portfolios.

Victoria’s day-to-day work includes helping both local and overseas clients with their intellectual property portfolios and giving strategic advice on filing and prosecuting trade marks in New Zealand, Australia and further afield.

Victoria’s client base covers a wide variety of industries including health and beauty, food and drink, healthcare, computer hardware and software.

Victoria studied law in France and continues to be the main point of contact for all work from France.

Victoria originally trained as a solicitor in England, where she practiced for seven years before making the move to Auckland. She has now requalified as a barrister and solicitor in New Zealand. Victoria is a part qualified UK trade mark attorney and is also studying towards qualification as a patent attorney in New Zealand.