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JacquiPryor
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Hi There,

Sorry for the late chime-in. Without knowing the particular name in mind it can be difficult to advise. I note the following is for information purposes only.

For example if your name is Sydney Fitness and they are Sydney Cafe then it’s unlikely they’d have a true monopoly on the name due to the descriptiveness. If the key element is quite unique they’d be more likely I imagine to take issue with someone else using the same/similar. In any event, if they did take concern with your use and find grounds to take any action you’d likely need to demonstrate you chose the name honestly, without awareness of their branding and without attempting to ‘trade off’ of any reputation they might have in that name.

From the trademark perspective –

Trademarks are registered in relation to the type of services ‘branded’ with that name. In theory you could register X Fitness for ‘personal training services’, and co-exist on the trademarks register with someone who may register X Cafe for cafe services. (If you were to both register your respective names for your respective activities neither one could take infringement action against the other).

Registering the trademark gives you the right to use that mark for the services you have claimed. However, it is a lengthy process – taking a minimum of 7.5 months in Australia.

If the other party does not have a trademark registration in place on their name (or, even if they did for cafe related services), they may not be able to take trademark infringement action over the use of the same/similar name by you. However, there are other areas of law to be considered if they were to be concerned by your use of the name… such as whether your use of the name is likely to mislead/deceive others into believing there is some affiliation with the cafe (misleading & deceptive conduct is prohibited by Consumer Laws) or whether they would have grounds to suggest your use of the similar name is “passing off” an affiliation with their business/services. These areas quite often come up when trademark infringement is discussed, but in the absence of a trademark registration to be infringed could be acted on separately.

Both areas can be complicated and if the cafe was to threaten any such action you would certainly need to engage an appropriate lawyer to advise further. At a very basic level, if there’s no chance of consumers being confused between the businesses then there would be less likelihood of any action. If there is a real danger of that confusion it would suggest a higher chance of some sort of action. Such action would normally start with a letter from the other party to outline their concerns/requests to resolve the issue.

Hope the above provides some food for thought. All the best :)