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We have all seen it, so many businesses within the same industry or service all have very similar names. You go to a retail shelf and find two products side by side with almost identical names and you can’t remember which one you wanted. New customers come to you asking for a service you don’t provide but a competitor does. These are the challenges of maintaining your business identity when you operate in a crowded and competitive market. In this article we, as non-lawers, are going to look at the causes of these confusions and what you can do to keep your business unique in people’s minds.
Le’ts start with a very classic example of business identity confusion, our own business name Copy Express. The reality is there are a lot of businesses out there with the word ‘copy’ in their name, not just world wide but locally too. Because the market share we operate in is fast turn around on demand printing that’s often copying a document multiple times, photocopiers are a core technology which leads to the term ‘copy’ being used in the name. People want it done fast, so terms like ‘express’ or ‘fast’ are also going to be used. So there are a few businesses out there that are ‘copy express’ world wide, and locally in Wellington there are several on demand print services that have ‘copy’ in their operating name. This is just unavoidable for the most part and you have to use other tools to help your business stand out, which we will discuss later. Another fact to consider is that most people rely on net searching to find a business and at least the results generally have the local ones at the top of the results.
Now with most nations, all businesses need to have unique trading names to prevent consumer confusion. In New Zealand it’s currently covered under the Fair Trading Act 1986, and a good overview of it can be found here. In practical terms, every industry will have common words that will be found in many business names as they need to be there to identify it. A plumber needs a plumbing term in the name, or how does a customer identify them as that type of business. The rules are there to prevent intended misrepresentation or outright fraud. The reality is that you will still get business that will skirt close to each other. There is ‘Copy Expresso’ based in Waiheke Island, and we occasionally get emails sent to us because people see ‘expresso’ as a mistake (copy coffee) and customers will occasionally correct it to ‘express’ which is our email address. Is that name breaking the rules? The NZ Companies Office considered it a valid name, as it’s pronounced differently (as in the coffee drink). But if I was setting up a new business, I would be careful to avoid picking a name that’s almost the same as existing ones or could be misspelt to match a competitor.
Another quirk of business names is that while you might only ever operate in one city or region, if it sounds the same as a company or brand that operates internationally, you might become subject to some very expensive litigation. You might remember the news of the Hilton Hotel suing several motels including the locally famous Blackball Hilton in 1992. The chain was able to win their cases as they were the preexisting business and it was arguable that the others were using that name by association to promote their business. The Blackball Hilton got around it by changing their name to Formerly The Blackball Hilton.
There are some cases where people will ‘borrow’ an intellectual property and assume they can get away with it. In 2015 a Christchurch Cleaning company found themselves being served notice by Universal Studios for intellectual property theft. While trading under the name ‘Minions and Me Cleaning Ltd’ that skirted the line, the fact she was using the Minions characters from the Despicable Me and Minions movies in her marketing and branding was contrary to both the Copyright and Intellectual Property laws. As James and Wells intellectual property partner Ceri Wells said that New Zealand had an ‘unsophisticated and naive attitude towards intellectual property rights.’ This quote was in response to CokeCola group suing the Innocent Cafe based here in Wellington because they were selling their own branded drinks using the Innocent label, which is an already pre existing brand in the UK. While CokeCola had no plans to bring the brand to NZ, if they didn’t pursue the cafe for intellectual property infringement they would be setting a precedent that other businesses overseas where the Innocent brand is sold would be able to trade off the brand name without legal repercussions.
So given the many problems you can find yourself in by not picking the right name for your business or your product, how can you make sure they are unique?
For a business name start with the Companies Register website as they have a very clear step by step guide on how to register and what to avoid when picking a name. They also have the One Check page where you can enter any name in and it will not just check to see if it’s been registered as a business name in NZ, but it’s similarity to other existing business names, if it’s available as a web domain, and if there are social media accounts using it.
From there a general google search is always sensible, as these days with the internet you could be pinged for infringement even if you will never operate outside your own small region (see the Innocent example). ‘Copy Express’ not only has the previously mentioned Expresso, but there’s a Copy Express based in Cape Town South Africa, one whose website is copyxpress but the business is named Copy Express based in New South Wales selling printing equipment, and a Copie Express based in Montreal that’s a copy shop chain. Be willing to try spelling variations too, as seen by the previous examples, as sounding like names can get you into trouble depending on what you’re trying to brand and who owns the existing name (the bigger the company the more likely they will take you to court for infringement.)
If you are just registering a business name that’s never going to go beyond NZ, you should be good to go. If you’re looking to go bigger, or to sell a branded product that potentially go overseas, then talk to a specialist intellectual property lawyer as they will be able to help you avoid potential issues and even help you prepare for overseas sales if you do want to eventually head in that direction
It only takes a little bit of effort on your part to make sure your branding stands out from potential competition and to avoid potential problems down the road. While this isn’t legal advice, what we have here should help you do the basics and then only go and seek out the specialists to make sure your business not doesn’t infringe on others, but to give you legal avenues if someone infringes on your business.
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