Can you use your brand name before it’s registered as a trademark?
To use it or not to use it before it’s registered...this is a perplexing question for businesses eager to adopt their new brand name and introduce it to the market.
An important factor to consider is the length of time that you’ve been using your brand. Has it been used for years, or is it a never-before-used brand name?
If you’ve been using your trademark name and never received any complaint about it from competitors, then you are probably fairly safe to continue using it while your trademark application is being processed and the trademark registration is pending.
However, if it’s new, then there is a risk that you could potentially infringe on an existing trademark (or a confusingly similar mark) and end up in a legal dispute. To minimise the risk of a trademark infringement complaint, it might be wise to rather wait until your trademark is registered.
Trademark registration is not guaranteed
Many business owners expect to get a quick confirmation that their trademark has been registered, after submitting their application. The reality is that the trademark registration process is more complex than that, and registration is not automatic.
The new trademark application must first be examined by a trademark expert at the Trademark Office, who will check that it meets the legal requirements and does not conflict with pre-existing trademarks on the register. After the application has been accepted, it is then advertised so that other parties have an opportunity to oppose it. The entire trademark application process takes at least 6 months, sometimes longer!
Once your trademark is registered, your protection will be backdated to the date of the submission of the application, but it’s still a long wait to get it.
So should you risk using your trademark while the registration is pending?
There is no one-size-fits-all answer. You have staked a claim to your intellectual property and now you have to weigh up the risks versus the benefits of using the trademark. This must be a carefully calculated decision. Get legal advice if you are uncertain.
If you conducted a comprehensive trademark search before you submitted your application and you have chosen a brand name which is highly distinctive and not likely to be confused with the brands of other players in your industry, then the risk of trademark infringement is likely to be minimal. Read What Makes a Trademark Distinctive?
To stay on the side of caution, you should wait at least until the Trademark Office has approved or accepted your trademark. Thankfully in New Zealand this only takes about 2-3 weeks. If no objections are raised, then you have a good chance of achieving a successful trademark registration.
However, there is always a small risk (around 2%) that you might receive a trademark opposition from someone who wants to block your registration. You may wish to weigh this up when considering whether to splash out on new signage and branding collateral.
Use your discretion
You are the expert on your industry - you probably know if there are competitors with similar brand names or how easily someone could copy you. You are also likely to be the best judge of how easy it would be for you to rebrand if you encounter a problem with your pending trademark.
If there are high risks, consider keeping your new brand under the radar until you have succeeded in registering your trademark to get the brand protection that you need. Then you can display it proudly with the registered trademark symbol, that shows that you have exclusive rights to that mark.
After you have registered your trademark in New Zealand, if you plan to trade in other countries, then you should also apply to register your trademark in those countries too.
