fbpx

LETS GET DOWN TO BUSINESS.

Question :
Hi, I recently started a business called ‘Bloom Weddings’ however a quick search on Google shows there are other businesses with similar names. How do I legally protect myself in this situation?Thanks,Achal

Question submitted 28/01/21 @ 04:18pm
Industry: Legal
101
VIEW
1
VOTE
  • Up
    1
    Down

    Hi Achal – it is amazing these days with Google to be able to search to find other people using similar names. There are a few things to think about here – including ‘how’ unique the name is vs generic and also prior use of it, and in what category of similarity e.g. is it the same name in the same industry in the same town. This is not always the case, but often if there is a prior use of the name then there is an argument that they were there first. This can get nullified if it is a generic name.

    Beyond all of this – what I would say is get some good legal guidance, and hopefully we can get a couple lawyers to give you some guidance. Andy

    Up
    0
    Down

    Hi Achal

    My colleague, Jason Rudkin-Binks, is a specialist in this area and has answered your question:

    There are really 2 ways that a business (trading) name can be protected. One is via a registered trade mark and the other is by that name being used in trade, i.e. as the name of a business, and so gaining a reputation in that name. Are any of the similar names you have found protected as trade marks? We suggest that you have a look on the IPONZ website which is located here. If so, then it is a question of how similar the trade mark and your name are and how similar the goods / services protected by the trade mark (not, not those actually used) are to your goods / services. The closer those 2 things are, the more confusion is likely and so the more likely your use will be infringing. In the case of the other similar name simply being used in trade, then it is a question of how close it is, how much use has been made (does it really have a reputation?) and of course, how similar the services it trades in are to yours. So the answer to this is very fact specific. In order to protect yourself, we suggest that you consider registering your own trade mark and also undertake the searches that Andy suggested and compare the services offered. It is perfectly fine for 2 businesses to have identical names provided that the goods / services offered are sufficiently different.

    Ed

    Up
    0
    Down

    Hi Achal

    My colleague, Jason Rudkin-Binks, is a specialist in this area and has answered your question:

    There are really 2 ways that a business (trading) name can be protected. One is via a registered trade mark and the other is by that name being used in trade, i.e. as the name of a business, and so gaining a reputation in that name. Are any of the similar names you have found protected as trade marks? We suggest that you have a look on the IPONZ website which is located here. If so, then it is a question of how similar the trade mark and your name are and how similar the goods / services protected by the trade mark (not, not those actually used) are to your goods / services. The closer those 2 things are, the more confusion is likely and so the more likely your use will be infringing. In the case of the other similar name simply being used in trade, then it is a question of how close it is, how much use has been made (does it really have a reputation?) and of course, how similar the services it trades in are to yours. So the answer to this is very fact specific. In order to protect yourself, we suggest that you consider registering your own trade mark and also undertake the searches that Andy suggested and compare the services offered. It is perfectly fine for 2 businesses to have identical names provided that the goods / services offered are sufficiently different.

    Ed

    Up
    0
    Down

    Hi Achal

    My colleague, Jason Rudkin-Binks, is a specialist in this area and has answered your question:

    There are really 2 ways that a business (trading) name can be protected. One is via a registered trade mark and the other is by that name being used in trade, i.e. as the name of a business, and so gaining a reputation in that name. Are any of the similar names you have found protected as trade marks? We suggest that you have a look on the IPONZ website which is located here. If so, then it is a question of how similar the trade mark and your name are and how similar the goods / services protected by the trade mark (not, not those actually used) are to your goods / services. The closer those 2 things are, the more confusion is likely and so the more likely your use will be infringing. In the case of the other similar name simply being used in trade, then it is a question of how close it is, how much use has been made (does it really have a reputation?) and of course, how similar the services it trades in are to yours. So the answer to this is very fact specific. In order to protect yourself, we suggest that you consider registering your own trade mark and also undertake the searches that Andy suggested and compare the services offered. It is perfectly fine for 2 businesses to have identical names provided that the goods / services offered are sufficiently different.

    Ed

    Up
    0
    Down

    Hi Achal

    My colleague, Jason Rudkin-Binks, is a specialist in this area and has answered your question:

    There are really 2 ways that a business (trading) name can be protected. One is via a registered trade mark and the other is by that name being used in trade, i.e. as the name of a business, and so gaining a reputation in that name. Are any of the similar names you have found protected as trade marks? We suggest that you have a look on the IPONZ website which is located here. If so, then it is a question of how similar the trade mark and your name are and how similar the goods / services protected by the trade mark (not, not those actually used) are to your goods / services. The closer those 2 things are, the more confusion is likely and so the more likely your use will be infringing. In the case of the other similar name simply being used in trade, then it is a question of how close it is, how much use has been made (does it really have a reputation?) and of course, how similar the services it trades in are to yours. So the answer to this is very fact specific. In order to protect yourself, we suggest that you consider registering your own trade mark and also undertake the searches that Andy suggested and compare the services offered. It is perfectly fine for 2 businesses to have identical names provided that the goods / services offered are sufficiently different.

    Ed

    Up
    0
    Down

    Hi. Looks like Ed and Jason have done a good job answering your question above. It’s not my area specifically, but if you do want another person to speak to, one of our IP specialist partners Chris Young has said he is happy to have a chat if you want to get in touch. His details are here – https://www.minterellison.co.nz/people/chris-young

    Good luck!

    Jeremy

  • You must be logged in to reply to this topic.