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Hi Chelle,

I am so sorry I didn’t see this earlier when Paul tagged me. I am very pleased you got a resolution so quickly.

As to the business name with ASIC – is it the same person you contacted, or is that separate?

Typically speaking, if you do find someone using the same name as your trade mark (or something confusingly similar) you need to look at several things to determine if you are allowed to ask them to stop:

a) Are they using the same or similar name in Australia?
b) Are they using the same or similar name for the same or similar services to those covered by your trade mark?
c) Did they start using the same or similar name before you first used yours or registered the trade mark (which ever is earlier).

If the business name you found with ASIC is a separate person to the one you already contacted, keep the above in mind (obviously they’re in Australia in that case), however, if they have not started using that business name yet it can’t infringe – trade mark infringement can only occur when someone puts the name to use as a trade mark for the same/similar services etc. So, if it’s merely a registered business name it doesn’t infringe yet, and, you can’t tell what sort of product/service is involved yet. Therefore you can either monitor to see what they do, or, consider (subject to specific review/advice of your situation and the business involve) putting them on notice that use for similar services to those covered by your trade mark registration may infringe.

As noted, very happy to see you had a good outcome with the person using it on social media – but keep the above in mind should the situation arise again in the future. Demanding someone stop use of a name if it turns out you don’t have the right to do so can backfire so I hope the above tips help for the future, and, again sorry I didn’t see the post earlier :)