Honest Concurrent Use: When Similar Trademarks Can Coexist in New Zealand

You find a brand name you love, pay for a logo, line up packaging, register a domain, and then discover someone else is already using a similar trade mark. At that point, many founders make one of three expensive mistakes: they assume the earlier mark automatically blocks them forever, they rush ahead and invest in branding without checking the real legal position, or they file an application that says too little about their actual use.

New Zealand trade mark law does allow similar marks to coexist in some cases. One key concept is honest concurrent use. It can matter where two businesses have built up their brands independently and fairly, often over time, and neither adopted the mark to ride on the other’s reputation.

This guide explains what honest concurrent use means in New Zealand, when it comes up, what factors usually matter, and what practical steps to take before you spend money on setup, before you invest in branding, and before you print packaging or sign supplier agreements.

Overview

Honest concurrent use is a trade mark concept that can allow two similar marks to be registered or used in parallel, even where they might otherwise conflict. It is not automatic, and it usually depends on the facts, especially how long each mark has been used, whether the use was genuinely honest, and whether consumers are likely to be confused.

• Whether both businesses have used their marks independently and in good faith
• How long each mark has been used, and in what parts of New Zealand
• What goods or services each business actually offers
• How similar the marks are in appearance, sound and meaning
• Whether there is real evidence of customer confusion, or a lack of confusion over time
• What proof you have, such as invoices, packaging, advertising, website history and sales records
• Whether the issue affects registration only, or also broader infringement and passing off risk
• What practical limits might reduce risk, such as narrower specifications or coexistence terms

What Honest Concurrent Use Means For New Zealand Businesses

Honest concurrent use can create a path forward where similar branding has been used by different businesses fairly and separately. It does not mean every conflict can be solved this way, but it can be highly relevant where a strict first-to-file or first-to-register approach does not reflect commercial reality.

In plain English, the idea is this: if two traders have honestly used similar trade marks at the same time, the law may allow both to keep operating or may permit registration despite the similarity, depending on the circumstances.

Why the concept exists

Trade mark law is meant to reduce confusion in the market, but it also recognises that business life is messy. Two founders can independently create similar business names, particularly in crowded sectors like food, beauty, software, retail or consulting.

Where each business has built some reputation without bad faith, an absolute rule against coexistence can be unfair. Honest concurrent use gives decision-makers room to look at the real world, not just compare marks side by side in a vacuum.

What “honest” usually means

Honesty is about more than saying you did not copy someone. The question is whether the mark was adopted and used in good faith.

That can involve factors such as:

• Whether you knew about the earlier mark when you chose your brand
• Whether your branding was selected independently
• Whether your business tried to benefit from another trader’s reputation
• Whether your presentation, logo, packaging or messaging increases the impression of association
• Whether you continued using the mark after receiving notice of a conflict, and on what basis

If a founder had no knowledge of the other mark and built the brand independently, that can support honesty. If they saw a competitor doing well and chose a similar name to capture that market attention, that points the other way.

What “concurrent use” usually means

Concurrent use means the marks have been used in the marketplace at the same time. The use needs to be real commercial use, not just a business idea, a company name registration, or a dormant domain.

Evidence may include:

• Sales under the mark
• Advertising and social media promotions
• Labels, menus, signage or product packaging
• Online storefronts and order records
• Invoices, distributor records or supplier documents
• Dates showing when the mark was first used and how use grew over time

Registration versus broader rights

This is where founders often get caught. Honest concurrent use may be raised in relation to trade mark registration, but that does not mean every commercial dispute disappears.

Even if registration is possible, there can still be issues around infringement, passing off, or misleading conduct depending on the facts. The closer the businesses are in market, geography, product type and customer base, the higher the risk that coexistence will still be difficult in practice.

That is why the right question is not only, “Can I register?” It is also, “Can I keep using this brand safely before I launch online, before I sign a commercial lease, and before I print 10,000 units of packaging?”

When This Issue Comes Up

Honest concurrent use usually comes up when a business discovers a conflicting mark after branding decisions have already been made. It often appears at the worst possible moment, after money has already gone into design, domains, labels, stock, signage or customer acquisition.

When filing a trade mark application

A common scenario is that you apply to register a mark in New Zealand and the application runs into an objection because an earlier similar mark already exists. If your business has been using the mark honestly and for a meaningful period, honest concurrent use may become part of the response strategy.

The details matter. A business that has quietly traded for years under a similar name may be in a very different position from a startup that only adopted the brand last month.

When another trader opposes your application

Sometimes the issue is not raised by the examiner first. Instead, an owner of an earlier mark may oppose the application.

At that stage, evidence becomes central. General statements like “we have both been in the market for ages” are rarely enough. You usually need a clear timeline, documentary proof of use, and a careful explanation of why your use has been honest and why the market can tolerate coexistence.

When you receive a cease and desist letter

A demand letter can arrive before any formal IP office process. The sender may say your name infringes their rights and insist that you stop using it immediately.

Do not assume you must fold at once, but do not ignore the letter either. Honest concurrent use may be relevant to your position, yet the right response depends on the strength of each side’s evidence, the similarity of the marks, and whether customers are actually likely to think the businesses are connected.

When both businesses have traded for years without problems

Some conflicts surface only when one party seeks registration, expands nationally, enters e-commerce more seriously, or starts selling through the same channels. Two local businesses may have coexisted quietly until they begin targeting the same customers online.

That matters because the practical risk of confusion can increase over time. What worked when each business served a different town may not work once both advertise nationwide.

When buying or investing in a business

This issue also comes up in due diligence. If you are buying a brand, taking investment, signing a distribution deal, or expanding into a new product line, a coexistence problem can affect value.

Before you sign a contract, check:

• Whether the brand is registered in New Zealand
• Whether there have been objections, opposition proceedings or warning letters
• Whether the current owner has evidence of use
• Whether similar marks exist in the same class or a related market
• Whether the business relies on an informal understanding with another trader rather than a documented arrangement

Practical Steps And Common Mistakes

The safest approach is to investigate early, preserve evidence, and make a commercial decision before you spend money on setup. Honest concurrent use can help in the right case, but it is usually a fallback argument, not a substitute for proper clearance and brand strategy.

1. Check the trade mark position early

Founders often search Google, see nothing obvious, and assume the name is free. That is not enough.

Before you invest in branding, look at the actual trade mark landscape, including similar marks, not just identical ones. A conflict can arise from a mark that sounds similar, looks similar, or carries a similar idea in relation to related goods or services.

This should happen before you:

• register a domain or social handles
• order packaging or signage
• commit to an app build or website design
• print menus, labels or promotional stock
• sign reseller, manufacturing or supplier agreements using the new brand

2. Gather real evidence of use

If honest concurrent use may matter, evidence is everything. You need more than a founder’s memory.

Useful evidence often includes:

• dated invoices and sales records
• screenshots showing historical website use
• advertisements, brochures and catalogues
• social media posts with dates and audience reach
• photos of products, labels, vehicles or storefronts
• distribution records and retailer listings
• statements about the areas where the mark has been used

Keep the evidence organised by date. A messy folder of screenshots with no chronology is much less persuasive than a clear timeline.

3. Be realistic about confusion risk

Long use by itself does not solve everything. If the marks are very close and the products are very close, the risk may still be too high.

Ask practical questions a customer would ask:

• Would someone seeing the marks quickly think the businesses are related?
• Would a buyer searching online assume one is a sub-brand of the other?
• Do the businesses sell through the same channels?
• Do they target the same audience?
• Has confusion actually happened in emails, orders, reviews or social messages?

A lack of evidence of confusion over a meaningful period can help, but it is not always decisive. Sometimes there has been no confusion simply because the businesses have not yet overlapped much.

4. Consider narrowing the specification

A narrower registration can sometimes reduce the conflict. If two businesses operate in related but not identical areas, the scope of goods or services listed in the application may matter a lot.

For example, one business may focus on wholesale ingredients while another uses a similar mark for a niche café offering. The legal answer may differ depending on how broadly each party claims its rights.

This is one reason generic, over-wide filing strategies can backfire. A broad application may invite a fight you did not need.

5. Think about a coexistence arrangement

Sometimes the commercial solution is a documented agreement rather than a winner-takes-all dispute. A coexistence agreement can set out how each party will use its mark to reduce confusion.

It may deal with matters such as:

• the exact form of the mark each side can use
• logo differences or branding presentation
• goods and services each side will stick to
• geographic limits, if relevant
• online naming conventions
• steps each side must take if confusion arises
• rules for future expansion or assignment

This needs careful drafting. A vague handshake understanding is risky, especially if one business later expands, changes its look, or sells the brand.

6. Do not confuse company names with trade mark rights

Registering a company through the Companies Office is not the same as securing trade mark rights. A company name can exist even where brand use creates trade mark problems.

This catches many startups. They assume that because the company name was accepted, the brand is legally clear. It is not.

7. Watch your marketing and representations

If a brand conflict exists, your advertising needs extra care. The Fair Trading Act matters as well as trade mark law.

Avoid marketing that could suggest affiliation, endorsement or shared ownership where none exists. This can be especially relevant if your branding sits close to another trader’s and your website copy, social posts or product descriptions amplify that similarity.

8. Review related legal documents

A trade mark issue often spills into other business paperwork. If you rebrand, expand, or agree on coexistence terms, other documents may need updating.

Check whether changes are needed in:

• supply and distribution agreements
• licensing terms
• website terms and online store content
• privacy policy disclosures where the brand identity changes
• franchise or reseller arrangements
• design, packaging and labelling approvals

Common mistakes founders make

The biggest mistakes are usually commercial, not technical. Founders move too far, too fast, before the brand position is settled.

Common errors include:

• choosing a name because the domain was available
• assuming no problem exists because another trader has not complained yet
• failing to keep records of first use
• filing an application with no strategy for likely objections
• continuing with confusingly similar packaging after learning of the conflict
• treating honest concurrent use as a guaranteed defence
• signing print, supply or lease commitments before the brand risk is assessed

FAQs

Can two similar trade marks both be registered in New Zealand?

Yes, sometimes. Honest concurrent use can be one reason, but registration is not automatic. The outcome depends on the marks, the goods or services, the evidence of use, and the likelihood of confusion.

Does honest concurrent use mean I cannot be sued for infringement?

No. It may be relevant, but it does not guarantee that infringement or other claims will fail. Registration issues and marketplace enforcement issues can overlap without being identical.

How much use do I need to show?

There is no single magic number. What matters is credible, dated evidence showing genuine commercial use over time, with enough detail to explain where, when and how the mark has been used.

What if I did not know about the earlier brand?

That can support the argument that your adoption was honest, especially if the branding was independently developed. It is still necessary to assess confusion risk and the strength of the other party’s rights.

Should I keep using the brand after receiving an objection?

Do not make that decision casually. Continued use may strengthen your commercial position in some cases, but it can also increase exposure and costs. Get advice before you print more stock, launch new ads, or sign new contracts under the disputed name.

Key Takeaways

• Honest concurrent use can allow similar trade marks to coexist in New Zealand in the right circumstances.
• The key questions are whether the use has been honest, whether it has occurred concurrently in the market, and whether consumers are likely to be confused.
• Evidence matters, especially dated proof of real trading activity, advertising, packaging and sales.
• Registration is only part of the picture, because infringement, passing off and misleading conduct risk can still matter.
• Founders should assess brand risk before they invest in branding, before they register a domain or print packaging, and before they sign supply or distribution contracts.
• Practical solutions can include narrowing goods or services, adjusting branding, or documenting a coexistence agreement.

If your business is dealing with honest concurrent use and wants help with trade mark clearance, registration strategy, coexistence agreements, cease and desist responses, you can reach us on 0800 002 184 or team@sprintlaw.co.nz for a free, no-obligations chat.