Trademark rights are a type of intellectual property that can be really advantageous to your company. It’s possible, nonetheless, that you can use a trademark’s corresponding rights without registering it. Consequently, this article will give some background information and outline the process for enforcing unregistered trademark rights.
Unregistered Trade Mark Rights
Trademarks act as distinctive identifiers for your company. They help customers recognize your products or services. As a result, a trademark serves as a “badge of origin,” helping potential customers know that the products or services you offer are made by your company. Notably, trademarks can have a wide range of components, including:
- words;
- phrases;
- shapes;
- logos;
- sounds;
- colors; or
- a combination of these.
A trademark is a type of intellectual property that your company may exclusively own in New Zealand.
Significantly, you must officially register your ownership with the Intellectual Property Office of New Zealand in order to benefit from various types of intellectual property rights (IPONZ). You can, nevertheless, have legal ownership rights in a trademark even if it is not formally registered. In that case, these would be unregistered trademark rights.
Using the ” symbol, you can claim ownership of an unregistered trademark.
In the end, there won’t be any serious concerns about using unregistered trademarks as part of your company’s branding. The situation could become more complicated, though, if someone challenges your ownership or makes an attempt to imitate your unregistered trademark.
IPONZ keeps a registration of the legitimate owner of a company over its registered intellectual property rights. You cannot rely on this formal record in the case of unregistered trademark rights, though. Therefore, you must find a way to establish your ownership if you want to benefit from unregistered trademark rights. You can accomplish this by proving that:
- you have used your trademark enough to build a solid reputation in the market;
- any other parties do not have a stronger claim to ownership than you do; and
- customers recognize your business by your unregistered trademark.
Your ownership rights are easier to prove if you have been using your trademark for a long time and have built a strong reputation with your customers. In particular, your trademark has gained enough goodwill to serve as a symbol of origin for your company. The following could serve as evidence to support your claim:
- customer testimonials;
- sales and advertising figures;
- newspaper and journal articles about your business; or
- reviews of your products bearing your trademark.
The stronger ownership rights may go to the other party if they have already registered a trademark that is identical to or confusingly similar to yours.
You may have legal options available if someone attempts to imitate your goods or services using your unregistered trademark or copies it. The law gives you specific authority over rights to unregistered trademarks.
You only have a case in any judicial process of this sort if the opposing party has any independent legal basis for using the unregistered trademark.
Therefore, you have two options for upholding your rights once you can prove that you are the owner of an unregistered trademark. Either a “passing-off” action or a Fair Trading Act action may be brought. In fact, you might try to rely on both for protection. The nature of both of these legal actions is described in the paragraphs that follow.
The practice of passing off is forbidden by commercial law. In essence, it is a deception if someone tries to use your unregistered trademark in such a way that consumers assume the goods or services are yours. This action may be appropriate if you can demonstrate that you own enough goodwill in the mark in question and that the other party’s activities have damaged you or will do so.
The Fair Trading Act, on the other hand, is a law that controls how businesses communicate with their clients and with one another. It specifically forbids misleading and dishonest behavior. You might be able to file a lawsuit under this statute if another person falsely claimed ownership of your trademark. In contrast to passing off, you do not have to demonstrate that their activities have resulted in measurable damage.
Despite this, in order to take either action, your unregistered trademark must have a strong enough market reputation. In court, you will be required to submit proof of your commercial reputation.
Obtaining corresponding protection rights for a trademark does not require registration. However, you must establish that you are the owner of an unregistered trademark and that you have a sufficient commercial reputation. If someone mimics or imitates your trademark, you might not be able to enforce your unregistered trademark rights. In the end, registering your trademark gives you the best opportunity to protect your interests.
You can find the list of international IP firms and New Zealand IP Firms here.