A team name can be worth as much as the team itself. That is the premise of New Zealand Rugby's (NZR) new High Court action against the Australian Rugby League Commission (ARLC), which plans to field a Papua New Guinea expansion side in the NRL under the name "PNG Chiefs".

NZR has owned the Chiefs Super Rugby franchise since 1996. It holds New Zealand registrations for both the word CHIEFS and the Chiefs logo, and has protected the logo in Australia since 1998. It now seeks interim and final injunctions preventing the use of "PNG Chiefs", "Chiefs" or any similar name in New Zealand.

The new side's name was announced in October 2025, following a public survey in Papua New Guinea. The NRL applied to register PNG CHIEFS in Australia two days later, and NZR filed its own application for the word CHIEFS shortly afterwards. According to NZR, IP Australia has warned of a real danger of confusion between the two names. The NRL has reportedly argued that identical team names already coexist across different sporting codes. With the team's official launch set for 21 October 2026, NZR says it has run out of room for negotiation.

The dispute is a useful case study in how our own trade mark law would approach a clash between two sporting brands.

A Word Mark here, a Device there

Trade mark rights stop at the border. A registration under the Trade Marks Act 194 of 1993 protects a mark in the Republic only, and a franchise with fans in several countries needs registrations in each of them.

The type of mark matters just as much. NZR's position in New Zealand rests on registrations for both the word and the logo. In Australia, until its recent application, it relied on the logo alone. That gap is significant. A word mark protects the name however it is written, presented or spoken. A device mark is assessed as a whole, and a rival using the same word in an entirely different logo, colours and typeface has more room to argue that the overall impression differs.

For sporting brands, the classes matter too. A team name is used for entertainment and sporting services in class 41, but also for replica jerseys and clothing (class 25), sporting goods (class 28), and broadcasting and digital content (classes 9 and 38). Protecting only the logo, or only the core services, leaves the most commercially valuable uses exposed.

CHIEFS v PNG CHIEFS: the confusion question

The NRL's apparent strategy, filing for PNG CHIEFS rather than CHIEFS alone, would face a difficult test locally.

Under section 34(1)(a) of the Act, a registered proprietor may stop the unauthorised use of a mark that is identical, or so nearly resembles it as to be likely to deceive or cause confusion, in relation to the registered goods or services. Section 34(1)(b) extends this to similar goods or services. Rugby union and rugby league matches are both sporting entertainment in class 41, aimed at heavily overlapping audiences.

The comparison of the marks follows Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A). The court considers the marks as a whole, as an ordinary consumer with imperfect recollection would meet them in the market, while giving weight to their dominant features. The question is whether a substantial number of people will probably be deceived or confused, including about a possible connection between the two teams.

On that approach, CHIEFS is plainly the dominant element of PNG CHIEFS. "PNG" is a geographical indicator that tells the public where the team plays, not who it is. Adding a place name to another's mark often makes confusion worse, not better, because it suggests a regional offshoot or affiliate.

The NRL's best counter is that "Chiefs" is a common sporting name, which is considered further below.

Reputation Without Registration

A team with no local registration is not necessarily unprotected. Two routes can fill the gap.

The first is section 35 of the Act, which gives effect to the Paris Convention. The owner of a mark that is well known in the Republic, and who is a national of or domiciled in a Convention country, may restrain the use of an identical or similar mark for identical or similar goods or services where confusion is likely. This applies even if the owner has no business or goodwill here. In McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd 1997 (1) SA 1 (A), the court held that a mark is well known if it is known to a substantial number of people interested in the relevant goods or services.

The second is passing off. Under Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd 1998 (3) SA 938 (SCA), the claimant must show a reputation among a substantial part of the relevant public within the court's jurisdiction. A foreign reputation can spill over, but it must be proved locally.

A team like the Chiefs, which played local franchises in Super Rugby for more than two decades and was broadcast here weekly, would have a strong case on reputation among rugby followers. Proving it, however, takes surveys, viewership figures and evidence, all of which a registration makes unnecessary.

Racing the Launch Date

NZR's timing is no accident. Once a brand launches, with jerseys printed, sponsors signed and supporters attached, the cost of changing it rises sharply and courts become more reluctant to order it.

In naming disputes, the balance of convenience often decides the matter. A rights holder who acts promptly can say that a rebrand before launch costs little compared with years of confusion afterwards. A rights holder who waits risks the opposite argument: that the other side has invested heavily in reliance on the name and that money damages will do. NZR says it raised its concerns as soon as the name was confirmed in October 2025. That record of objection is exactly what a court would want to see.

The lesson is that informal correspondence is not a strategy. If negotiations stall, the time to seek relief is before the launch, not after it.

A Crowded Field

The NRL's strongest point is that sport is full of shared names. Chiefs, Lions, Sharks, Bulls and Kings recur across codes and continents, often without confusion.

Local fans know this well. Kaizer Chiefs and the Super Rugby Chiefs have both been household names here for decades, and few supporters would mistake one for the other. Different sports, distinct logos and colours, and separate fan bases keep them apart in the public mind.

That coexistence has limits, though. A word in common use in a field may have weaker distinctive character, and courts may give it narrower protection. But the more closely the competing teams' activities align, the less that argument helps. Rugby union and rugby league share a ball, a heritage, overlapping broadcasters and many of the same supporters. Players, including some signed by the new side, move between the two codes. A football club and a rugby franchise can comfortably share a name; two rugby teams playing in the same region are a different matter.

Where both sides have legitimate claims, a coexistence agreement is often the sensible outcome. Such agreements typically allocate territories, require distinct logos and colours, and set rules for merchandise and online use. They are far cheaper than litigation, and far more predictable.

Practical Lessons

For clubs, franchises and governing bodies:

• Register the word, not just the logo. A word mark is the broadest and most flexible protection a team name can have.
• File wherever the brand travels. Tours, broadcast markets and merchandise sales all create exposure in countries where the team never plays a home game.
• Cover the full commercial range: sporting services, clothing, sporting goods and digital content.
• Monitor the register. An early opposition is cheaper and faster than an infringement action.
• Keep a record of every objection. If litigation follows, a prompt and consistent paper trail supports urgency and the balance of convenience.

For leagues and new teams:

• Run clearance searches before the name is announced, not after. A public survey can choose a popular name, but it cannot clear one.
• Don't rely on a prefix. Adding a place name rarely takes a mark outside another's rights.
• Consider coexistence early. Once a launch date is fixed, the leverage shifts to the earlier rights holder.

The New Zealand court will decide whether two Chiefs can share the same rugby-loving market. Whatever the result, the case shows that thirty years of goodwill is only as strong as the registrations behind it, country by country and class by class. For an established team, the name is often its most valuable asset. Protecting it means registering the word as well as the logo, wherever the brand travels, and acting quickly when a rival appears. For a new team, it means clearing the name before the fans fall in love with it.