Want to setup a Company where part of the company name is a registered Trade Mark in other countries but not NZ

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Forums › Startups › Want to setup a Company where part of the company name is a registered Trade Mark in other countries but not NZ

jimbob79

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#225623 27-Nov-2017 11:57

So, I want to set up a new company. But part of the company name is already a registered Trade Mark in other countries but not here in NZ. I've checked the NZ companies office and the name I want to use is available including domain name etc.

Can the company owner of the registered Trade Mark and can issue a 'Cease and Desist' notice if they have no presence in New Zealand?

xpd

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#1908389 27-Nov-2017 12:29

You said "part" of the name - long as you aren't in the same trade, and its not a product name, I don't see it being an issue.

I own KiwiBlast Ltd, but theres Kiwi Blast Painters, and Kiwi Blast Yoghurts out there, never heard from either ;)

XPD / Gavin

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Stu

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#1908395 27-Nov-2017 12:36

Could depend on how much they pay their lawyers (ie. If they're a big company the risk of entanglement could be increased).

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marpada

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#1908412 27-Nov-2017 12:59

Stu: Could depend on how much they pay their lawyers (ie. If they're a big company the risk of entanglement could be increased).

Cautionary tale: https://www.stuff.co.nz/business/small-business/98204354/wellington-st-cafe-continues-search-for-a-new-name-without-innocence

wellygary

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#1908477 27-Nov-2017 14:27

jimbob79: Can the company owner of the registered Trade Mark and can issue a 'Cease and Desist' notice if they have no presence in New Zealand?

Yip,

The question you need to ask is, "would you be prepared to die in a ditch for your name"? , if the answer is anything other than "hell yes, let me empty my wallet into the local IP lawyers beer fund" - then abandon the name now and move onto another....-

Even it you registered it here, if the OS holder (which predates you) decides they don't like "the cut of ya jib" and lawyers up on you then you are pretty stuffed...

eracode

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#1908584 27-Nov-2017 17:58

Coak-a-Coaler NZ Limited?

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