Company Name Vs Trade Mark: What Should I Register First?

You have found a name you love, checked the domain, and can already picture it on your website, packaging or invoices. Then the practical question hits: should you register the company name first, or protect the brand as a trade mark?

If you're comparing a company name versus a trade mark in New Zealand, the key thing to know is that they do different jobs. The Companies Office helps you set up your company. IPONZ helps you protect your brand.

The best order isn't always obvious, but it doesn't have to be complicated. A little name clearance work early can save you from rebranding after you have already spent money on design, stock, signage or ads.

Company Name Or Trade Mark: Which Should I Register First?

Usually, you should check trade mark availability before you commit to a business name or company name, then reserve or register the company and apply for the trade mark as early as you can.

That's because a company name registration doesn't give you brand ownership. It simply means your company can be registered under that name under the Companies Act 1993 and Companies Office rules.

A trade mark is different. A registered trade mark can protect the name, logo or other brand sign you use to identify your goods or services. In New Zealand, trade marks are handled by the Intellectual Property Office of New Zealand, known as IPONZ, under the Trade Marks Act 2002.

For most new businesses, the practical order looks like this:

1. Shortlist your names: Pick two or three names in case your first choice is too risky.
2. Run basic clearance checks: Check the Companies Register, NZBN Register, IPONZ trade mark database, domain names, social handles and general search results.
3. Assess trade mark risk: Look for identical names and similar names in related goods or services.
4. Reserve the company name: If you're setting up a company, reserve the name through the Companies Office as part of registering a company.
5. Apply for the trade mark: File your trade mark application with IPONZ before you invest heavily in the public brand.
6. Launch with the right documents: Put your website terms, customer terms, supplier agreements and confidentiality protections in place.

If you aren't sure whether your name is clear, it's worth getting tailored advice before you spend money on the launch. Trade mark similarity can be more subtle than it looks.

Does Registering A Company Name Protect My Business Name?

No, registering a company name doesn't properly protect your business name as a brand.

When the Companies Office approves a name, it's checking whether that company name can be registered. It isn't giving you exclusive rights to use the name in the market, and it isn't checking whether you might infringe someone else's trade mark.

This is a common trap. You might successfully register a company called Green Fern Studio Limited, but another business may already own a registered trade mark for Green Fern in relation to design services. If you start using Green Fern Studio as your public brand, you could be asked to stop using it or rebrand.

A company name also may not be the same as your trading name. For example, your company might be Ocean Peak Limited, but your cafe brand could be Salt & Steam. If customers know you as Salt & Steam, that's the name you should be thinking about protecting.

There's no single national register that gives automatic protection for trading names in New Zealand. Your NZBN profile may show trading names or business details, but that isn't the same as trade mark protection.

To protect your business name in a stronger way, you'll usually look at:

• Trade mark registration: Protects your brand name, logo or sign for specific goods or services.
• Copyright: May protect original artwork, written content, photos or designs, but not usually a simple business name on its own.
• Contracts: Helps you control how suppliers, contractors, licensees or franchisees use your branding.
• Confidentiality terms: Protects brand ideas, launch plans and other sensitive information before release.

What Checks Should I Do Before I Launch A Brand?

You should check the legal, commercial and online availability of the name before you rely on it publicly.

A Companies Office name search is a good start, but it isn't enough by itself. Your brand clearance process should look at how the name will actually be used, who else is using similar names, and whether customers could be confused.

Brand Clearance Checklist

1. Write down the exact name: Include spelling, spacing, punctuation and any shortened versions people might use.
2. List your goods and services: Be specific. For example, skincare products, online coaching, cafe services or software subscriptions.
3. Search the Companies Register: Look for identical or very similar company names.
4. Search the NZBN Register: Check similar business names and trading names that may appear in the market.
5. Search IPONZ: Look for identical and similar trade marks in related classes.
6. Check domains and social handles: This doesn't prove legal ownership, but it tells you what customers may find.
7. Search online and marketplaces: Look at Google results, Instagram, Facebook, LinkedIn, Trade Me, app stores and relevant industry directories.
8. Keep records: Save screenshots, search dates and notes about what you found.

Here is a simple example. Mia wants to open a Wellington cafe called Bloom and Bean, and she also plans to sell packaged coffee online later.

The Companies Register search looks fine. But an IPONZ search shows a similar registered trade mark for coffee beans in Class 30. Cafe services usually sit in Class 43, but packaged coffee sits in Class 30. That means Mia might be able to operate a cafe under a different risk profile, but selling branded coffee bags under that name could be a problem.

Instead of spending money on signage and packaging straight away, Mia changes the brand to something more distinctive. She then applies for one trade mark class for cafe services first, with a plan to add packaged products when she is ready.

If you're keeping an internal record of your naming decision, you can use this outline. It isn't a finished legal document, and it should be tailored before you rely on it for a launch decision.

1. Proposed Name: Write the exact brand, logo wording and any variations.
2. Business Activities: List the goods and services you'll offer now and in the next 12 to 24 months.
3. Searches Completed: Note the Companies Office, NZBN, IPONZ, domain, social and market searches you ran.
4. Similar Results Found: Record any similar names and why they may or may not be a concern.
5. Risk Rating: Note whether the name looks low, medium or high risk, and why.
6. Decision: Record whether you'll proceed, change the name, or get advice before launch.

How Do I Reserve A Company Name With The Companies Office?

You reserve a company name through the Companies Office before you apply to incorporate your company.

The reservation process checks whether the name is available for company registration. The Companies Office may reject a name if it's identical or nearly identical to an existing company name, or if it's offensive or otherwise not acceptable under the Companies Act 1993 rules.

A company name reservation isn't permanent. Once approved, it usually lasts for 20 working days. If you don't incorporate within that window, the reservation can lapse and you may need to reserve it again.

The official name reservation fee is currently $10 plus GST. If you then incorporate a New Zealand company, the current company incorporation charge is $118.74 excluding GST, or $136.55 including GST, made up of the Companies Office fee and applicable levies. Always check the Companies Office fee schedule when applying, as fees can change.

When you incorporate, you'll need details such as:

• your company name
• your registered office and address for service
• director details
• shareholder details
• share structure
• whether you'll adopt a constitution

A company structure can be a good fit if you want clearer ownership, limited liability and a structure that can take on investors or shareholders later. But the name registration step and company constitution are only parts of that setup.

If you have co-founders or early shareholders, think about your shareholders agreement at the same time. Your brand may become one of the most valuable assets in the business, so it's worth being clear about who owns it and how it can be used.

When Should I Apply For A Trade Mark?

You should apply for a trade mark once you have a name you're comfortable with and before you invest heavily in public branding.

IPONZ trade mark applications are filed by class. A class is a category of goods or services. For example, software, clothing, cosmetics, education services and hospitality services usually sit in different classes.

The official standard IPONZ application fee is currently $100 plus GST per class. That means one class is currently $115 including GST, and two classes are currently $230 including GST. The number of classes you need depends on what you sell now and what you genuinely plan to sell under that brand.

After you apply, IPONZ examines the application. If there are issues, IPONZ may raise an objection. If the application is accepted, it's advertised for opposition. There's generally a 3 month period where another party can oppose registration. If there's no successful opposition, the mark can proceed to registration.

Once registered, a New Zealand trade mark lasts for 10 years and can be renewed every 10 years. Your protection is tied to the goods and services in your application, so the wording matters.

For example, if you run an online fitness coaching business, you may need protection for education or coaching services. If you later sell branded activewear, you may need another class. If you only protected coaching services, your trade mark may not cover clothing.

A strong trade mark application should usually cover:

• the correct owner, such as the company or sole trader that will own the brand
• the right version of the mark, such as the word mark, logo, or both
• the right classes for your goods and services
• clear wording that matches what your business actually does
• a plan for future products or services you expect to launch under the same brand

What If Someone Else Is Already Using A Similar Name?

If someone else is already using a similar name, pause before you launch and work out whether the risk is legal, commercial, or both.

Not every similar name is a dealbreaker. Two businesses can sometimes use similar names if they operate in completely different industries and customers are unlikely to be confused. But if the names, goods or services, target customers, or sales channels overlap, the risk can increase quickly.

You should look at:

• Is there a registered trade mark? A registered mark usually creates a clearer legal risk than an unregistered name.
• Are the goods or services related? A skincare brand and a software platform may be less likely to clash than two skincare brands.
• How similar are the names? Similar sound, spelling, meaning or visual impression can all matter.
• Who used the name first? Earlier use can matter, especially if the business has built a reputation.
• Could customers be misled? The Fair Trading Act 1986 prohibits misleading or deceptive conduct in trade.

Your options might include choosing a new name, changing the distinctive part of the brand, applying in narrower classes, or speaking with the other party about consent or coexistence. Any consent, coexistence or domain name licence arrangement should be documented carefully, because vague emails can create problems later.

Sometimes the best commercial decision is to rebrand early, even if you feel attached to the name. It's usually cheaper to change a name while it's still in a spreadsheet than after you have launched a website, packaging, ads and customer accounts.

If you receive a complaint from another business, keep records of what you have used, when you started using it, where you used it, and what searches you did. Then get advice before responding in detail.

Key Takeaways

• A company name registration lets you set up a company under that name, but it doesn't give you full brand protection.
• A registered trade mark is usually the stronger way to protect your business name, logo or brand sign in New Zealand.
• Run clearance checks across the Companies Register, NZBN Register, IPONZ, domains, social media and the wider market before you launch.
• A Companies Office name reservation usually lasts 20 working days, so time your incorporation steps carefully.
• Trade mark applications are filed by class, and the right classes depend on what your business sells now and plans to sell soon.
• If a similar name already exists, get advice before you spend heavily on branding or respond to the other business.

If you'd like help with choosing the right name strategy, applying for trade mark protection, setting up your company and getting your launch contracts in place, you can reach us at 0800 002 184 or team@sprintlaw.co.nz for a free, no-obligations chat.