Do you need assistance making sure that your potential new business or brand name is available?
Protect your brand – contact Intellectual Property Law expert, Bret Gower today to set up an appointment.
21 March, 2018 | Bret Gower
This seems an obvious step but in our experience one that can be overlooked by people eager to use a certain name. You are looking for two things:
1) the name you want being used as a website address (also known as a domain name or URL); or
2) the name you want being used as a company or brand name. Remember to read down a few pages in case the name you’re wanting is being used but has a low Google ranking.
Searching the Companies Register does not guarantee that your chosen name is not being used by somebody as a trading name but it gives you some certainty that you can reserve a name if it’s not currently being used. The Registrar’s parameters for determining acceptability or otherwise of company names are different from those for trade marks so you might find a company name is capable of being registered but can not be protected as a trade mark.
Protecting a trademark with formal registration is relatively straightforward but it is essential to understand that protection is only available in the same category or class as that you have selected for your goods or services. A trademark search will only highlight trade marks that have been registered, so it may still be possible that somebody else is using your chosen name as a trade mark without registration and they will still have some trade mark usage rights that might prevent you using it. On the other hand an existing registered trademark can be challenged (see below) so an existing registration is not necessarily a barrier to use.
Looking to see whether your chosen name is already reserved as a domain name can quickly tell you whether somebody else has a claim against it. You might also find that somebody is using your chosen name with a .com suffix, but the .co.nz or .nz suffix is still available. It is important if this is the case to look at what the existing domain name is being used for before deciding you can use it. In some cases it has been determined that conflicting use exists even though the alternative suffix was available for use, on the basis that there is a reasonable chance it causes confusion. When this happens the .nz Dispute Resolution Service has the power to enforce the transfer of a domain name to another person.
A whois search is really a secondary search as part of your domain name investigation. If you’ve found your chosen name is already registered against the suffix that makes the most sense for how you want to use it, you might want to know “who is” the registered owner. A whois search gives you the details of who the domain name is registered to, including contact email addresses and phone numbers. There are many reasons why you might want to do this. Your chosen name might be registered but not being used. It might be registered by somebody planning to use it in the future or simply to prevent it being used in a competitive environment. There are ways you can address these circumstances, and it could be as simple as asking whether they still want it – you might find they’re happy to let you use it. Alternatively you might be able to challenge the existing registration through the .nz Dispute Resolution Service, see more discussion on challenges below.
Each of the above searches is not necessarily definitive of your decision, they really only provide information for you to use to weigh your decision. A Google search will give you an overview of how your chosen name is being used or applied on the internet currently, but it doesn’t reveal much about its use in the physical world or in any registrations that are not currently active. For example, a name might be a registered company name or even the unregistered trading name for a business with no website. It could be a registered trademark or going through the process of being registered (this can take 6 months), or it could be an unregistered trademark that has existing usage rights but no internet presence. Admittedly, the circumstances of a name with no internet presence are becoming rarer but it is worth remembering that it is a possibility.
Each of the company, trademark and domain name searches also only provide factors to weigh your decision and each is able to be challenged on different grounds and depending on the circumstances.
Talk to Smith and Partners’ intellectual property specialists about what options you might have to challenge the existing users or registrants of the name you’re wanting.
28 June, 2017 | Bret Gower