Intellectual property rights. By Roslyn Morshead, of Rotorua’s Morshead Law ros@morsheadlaw.co.nz

It’s not easy picking a unique business name, and getting even harder to ensure your intellectual property is protected and your business name secure for the future without infringing on someone else’s patch in the process.  This was the recent predicament for a new joint venture I am also involved in, and I thought I’d share some general personal observations. It turns out that being unique is quite hard, and infringing on someone else’s business name rights relatively easy.
There are several things to consider when naming a new business, but I personally think it all boils down to one key word:  ‘unique’.  To be unique a business name should be descriptive, memorable, and easily spelt; the name registrable as a non-conflicting trade-mark with the Intellectual Property Office (IPONZ); and that the matching top-level internet domain name space such as .co.nz, .com.au or .com can be secured, as well as any second-level domain names such as .net, .nz, .kiwi, etc.
We actually discovered that there are limited words suitable for a business trading name, many are already registered with IPONZ, and there’s even less availability of short and practical business top and second-level domain name space.
Now you might think that your business name doesn’t really matter.  But what if you want to expand or sell in the future?  And what if someone’s already trading under your newly-chosen business name with matching domain, or starts up a business with the same name as yours?  An extreme example of this is a US start-up who launched using their new business name using a matching second-level domain name – because the equivalent .com top-level domain was already in use by another business. The start-up became hugely successful and it reportedly cost them around a million US dollars to later buy the .com top-level domain name!
So, what happened for us? Well, as the .co.nz top-level domain name was already in use as a private email address, we compromised with a matching second-level domain name.  We then made a trade-mark name application to IPONZ.  It transpired our proposed business name was phonetically the same, and therefore potentially confusingly similar, to another pending trade-mark application made by one of our main Banks some months earlier.  This didn’t surface in earlier searches because of the spelling difference, but was a major issue for us given future plans for possible business expansion via franchising or licensing.
The result? The combined issues of not having the .co.nz top-level domain, and the uncertainty of any possible ‘confusingly similar’ IPONZ trade-mark objections that could yet drag on for months, led us to the very easy decision to avoid being distracted, cut the proposed name loose, and instead focus our energies on choosing a replacement that didn’t carry any baggage.
I’d recommend that if you find yourself in any hot water over name usage,  or someone else is trading on the name of your business coat-tails, be sure to talk to a lawyer sooner rather than later.