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  • #966265
    klkbarber
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    Hi everyone,

    I’ve just joined the forum and am in the process of starting up an online business selling memory related products. I will have a product of mine as well as sell other accessory products.

    I have two business names to choose from and neither are registered in Australia, and when I did a search on IP Australia I did not find any related trademark conflicts. But both of the names I’ve shortlisted are the same as businesses in the UK. One of the UK companies sells a product similar to mine in functionality but the material, design and style is totally different. The other name I have chosen sells a product that is not related to my business.

    My question is that as I am selling online only will it be an issue to choose a business name that already exists in the UK. I don’t want to have trademark issues in the future. Do I need to spend (my very limited) start up money and speak to an expert? Or is there another way I can get some advice?

    Thanks,
    Kirsty

    #1017121
    klkbarber
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    Hi,

    Thanks for your comment. It’s a bit of a grey area as to what might infringe on another’s business. For example, if we are in a similar industry but have different products is that considered too close to have similar names? Would this restrict my ability to trademark my business name and logo?

    Thanks
    Kirsty

    #1017122
    [Former] FS Concierge
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    Hi Kirsty

    I think the person who responded to you was a spammer, so their post has been deleted. Apologies if that has caused any confusion!

    Cheers
    Jayne

    #1017123
    work4me
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    klkbarber, post: 19518 wrote:
    Hi everyone,

    I’ve just joined the forum and am in the process of starting up an online business selling memory related products. I will have a product of mine as well as sell other accessory products.

    I have two business names to choose from and neither are registered in Australia, and when I did a search on IP Australia I did not find any related trademark conflicts. But both of the names I’ve shortlisted are the same as businesses in the UK. One of the UK companies sells a product similar to mine in functionality but the material, design and style is totally different. The other name I have chosen sells a product that is not related to my business.

    My question is that as I am selling online only will it be an issue to choose a business name that already exists in the UK. I don’t want to have trademark issues in the future. Do I need to spend (my very limited) start up money and speak to an expert? Or is there another way I can get some advice?

    Thanks,
    Kirsty

    Hi Kirsty,

    I registered two trademarks earlier this year and IP Australia is very helpful after you have lodged your application but they are not strong on giving free advice. They do have a lot of information on their site though. Keep in mind that you may want the same business name, trademark and domain name and considering that registering a domain name is about $25 and registering a business name is free, that is where I would start.

    As far as trademarks go, and I am not an expert, the name must not already be registered or be words used every day by other people to describe their product, for example, you cannot register Stable Memory as a trademark. If you pick a trademark, they will compare that to other registered trademarks in the same industry classification chosen when lodging the application, not based on the product you supply. This is why you can have Quicksmart Prams and Quicksmart Exhausts both registered as trademarks.

    A preliminary trademark application is $90 and that could give you peace of mind that all is ok. Registering the trademark will cost more but you have time to do that and you should be able to tell by then if your business is going to fly or not.

    If the businesses in the UK only have registered business names and not trademarks then all you need to concerned about is if there is a similar business name registered in Australia.

    Kind regards,

    #1017124
    King
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    Yes the UK one in no way influences your registration as the trademark in AU.

    Also not that if registering a trademark, it is for specific purposes. That is you can register it for use on cosmetics, but that does not stop me from registering the same words for use on, say fridge magnets. There are many classifications and you need to register for all that you feel could have use (or cause confusion) in the future

    #1017125
    sixx
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    Hi,

    A State by State name search is advisable too if looking to be exclusive in Australia.
    Because of the Australian IP structure (different to the US) if a company is already operating under the same name (even if in the same Goods/Services class) they have a right of reply. Although they will not be able to stop you registering your mark, they can infact register theirs and are almost unstoppable to do so.

    Usually you would trademark a particular word, or a logo.
    If you register the word, the existing company can register their logo, even if it says the same thing.
    If you register your logo, the existing company can register the word, or their operating logo or both.

    When I say the existing company is “almost” unstoppable, several things are taken into account, with time usually being the factor with the most authority.
    If the company started up a week ago, you could have a great chance at rolling them, if they’ve been going for 10yrs you will probably have to share depending on which of you have the deepest pockets.

    This ruling seems very hazy at best. If in doubt, always consult a professional Trademark Attorney.

    Today, the best form of protection after a trademark is the domain name.
    If customers are looking for you or your competitor with the same name, they should get to you first.

    #1017126
    King
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    Sixx – I think you are transposing business name registration with trademarking.

    A trademark is very specific, is national and is senior to business names and domain names, with some of the usage riders you mention.

    It is the primary form of protection.

    Essentially domain names are meaningless in the protection stakes, except that if you have it, then no-one else can. But if you trademark say, “Bigfoot”, then you can prevent a domain name bigfoot.com.au being used as it is a derivative of your trademarked wording.

    #1017127
    sixx
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    I’m not actually transposing anything king.

    Trademark law is defined by word constituents.

    Big foot is Bigfoot. If you were to say both names, they are the same.
    If they are written as a domain name …bigfoot.com, they are the same.

    However if you as bigfoot were to attempt to stop big foot (an existing company)
    from using the domain … bigfoot.com you wouldn’t have a leg to stand on.
    If you are the owner of the bigfoot trademark and big foot ( an existing company) or b igfoot, bigf oot wants to trademark their name, unless you have as much money as them, you are not protected at all.
    IP Australia doesn’t stop companies from registering trademarks, is up to the trademark owner to do so if they believe they are being infringed, and as stated earlier, the more IP the existing comapny has built into the business the harder/more costly your job will be to defend your mark.

    Australia is littered with examples.

    Have a look at trademark 11144417 and look at 1168775.

    And yes, domains are worthless, but I’d rather (as bigfoot) have bigfoot.com than big-foot pty. having it.

    #1017128
    sixx
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    IP Australia

    BIGFOOT – Registered From: 27-APR-2005
    Goods/Services – Class 32

    BIGFOOT ; BIG FOOT ; BigFoot ; Big Foot ; bigfoot ; big foot – Registered From: 28-AUG-2006
    Goods/Services – Class 32

    #1017129
    King
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    Yes sixx we are essentially saying the same thing. But once you have tied up a trademark and are using it for the nominated product, then it cannot be registered again under the same class and description – as with your example, bigfoot, is under class 32 twice, one for beer, and again for non alcoholic drinks, so they are specific.

    We have documentation for our trademark where the previous owner had to defend it, and registration under a class, description within that class and usage was what was required to defend it.

    #1017130
    sixx
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    King, post: 27431 wrote:
    Yes sixx we are essentially saying the same thing. But once you have tied up a trademark and are using it for the nominated product, then it cannot be registered again under the same class and description – as with your example, bigfoot, is under class 32 twice, one for beer, and again for non alcoholic drinks, so they are specific.

    We have documentation for our trademark where the previous owner had to defend it, and registration under a class, description within that class and usage was what was required to defend it.

    Yes king, we are saying the same thing which is why I was confused that you mistook my intial post. I was talking about classes and because you have a word or logo in a particular class does not mean you have exclusive rights to that word/words or logo.
    So still not quite sure how I was transposing and I think your last post suggests that you’re not even sure. :)

    Also, bigfoot was just an example that I found fitting as you raised it.
    But it doesn’t explain the first example whereby both have the same word constiuents registered in the same class AND offer the same services in their descriptions, so like I said, the laws surrounding this point is hazy at best and would be advisable to consult an Trademark Attorney if in doubt.
    I know this case intimately and it was the IP that one of the parties had built up over the years is what got them over the line.

    So my first point to the OP still stands. If you are in a position to chose between two names (as they state they are) then by choosing the one that no one is using as an existing business will put you on a decent footing for defending your mark against any start-up wishing to also use the name, in your class with a similar description.

    Food for thought: All classes/descriptions aside. Do you think it would possible to register Coca Cola as say for example a Real Estate agent?

    You could if you had more money than Coca Cola.

    Cheers

    #1017131
    King
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    My understanding from reading the IP Aust site and talkingto them on the phone, plus our solicitors advice, is if you have the TM for a word/s in a particular class that states, say “beverages”, then no one else can use the word/s for beverages of any sort. If it were for “beer” only, then you could use it on a soft drink.

    The game is to register it as widely as possible, with full descriptions under the class. Of course any bugger can come along and challenge it, just like patents and depending on the depth of you pockets, even if you are in the right, and challenge you. I know ours cost the previous owner over $10k to defend, and that was a simple case.

    Logos of course take the matter more deeply.

    #1017132
    sixx
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    King, post: 27435 wrote:
    My understanding from reading the IP Aust site and talkingto them on the phone, plus our solicitors advice, is if you have the TM for a word/s in a particular class that states, say “beverages”, then no one else can use the word/s for beverages of any sort. If it were for “beer” only, then you could use it on a soft drink.

    Yes, this is pretty much the case in most circumstances, but not always simply because of how the courts would deem the IP involved.

    Scenario 1:
    Let’s say bigfoot is selling t-shirts that say bigfoot on it and has registered the name bigfoot in the class of clothing & headwear with the description of t-shirts.

    Start-up bigfoot comes along and attempts to register bigfoot in the hope of selling t-shirts that say bigfoot on the front.

    You as the existing company and existing good will are in the box seat and Start-up bigfoot will soon discover that continuing the due process may serve fruitless. However the longer they fight for it, the longer you have to defend it.

    Scenario 2:
    Start -up Bigfoot (after discovering the word is not trademaked) registers the name in the class of clothing & headwear with the aim of selling T-shirts with bigfoot on the front. Registration goes through and their name can not be taken away from you by anyone else.

    Existing company “already” calling themselves bigfoot and selling t-shirts with the bigfoot on the front after 10 years decides to register bigfoot as a name in the classes/description of selling t-shirts.

    It is now up to start-up bigfoot to defend their name.
    The end result of whether start-up wins their case will come down to the courts if it actually gets that far. If the courts deem Existing Bigfoot to have established appropriate levels of goodwill in the industry and in the eyees of customers, Existing Bigfoot will be allowed to register the mark “also!”.

    Neither can take the mark off eachother, nor do either have exclusive rights.

    ……………………………………………………..

    When you look at it like this, you will see how my intial suggestion of researching existing company names (not just trademarks) is a wise move, especially (as the OP states) if you are in a position to choose between names.

    We have several trademarks and have been on both sides of the ledger on several occasions.
    Had someone given me the same piece of advice from day 1 I may of saved alot of headaches, and alot of coin.

    Cheers

    #1017133
    King
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    If this is the case then it means the trademark process is null and void and people should save their $ and not bother, just go out and create a market position!!

    Seems damned weird to me, esp when the IP Aust website extols the virtues of the protection afforded by having a trademark.

    #1017134
    sixx
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    King, post: 27452 wrote:
    If this is the case then it means the trademark process is null and void and people should save their $ and not bother, just go out and create a market position!!

    Seems damned weird to me, esp when the IP Aust website extols the virtues of the protection afforded by having a trademark.

    I totally agree mate, although I can appreciate some outcomes that have transpired in the past.

    Without boring you crazy and apologies to the OP for straying offtopic, another example would be this.

    Imagine Flying Solo attracted 1 million members over a long period of time and through their hard work were in a position to charge a $10 membership fee from each member resulting in a $10,000,000 turnover each year.
    You or I see this and think hmm … Flying Solo isn’t a registered trademark. I think I’ll register it in the class of computers etc and with a description of subscription information forums/services. I’ll have them shut down and take their domain name.

    Can you see what’s wrong with this picture?

    People do have rights believe it or not.

    However if Flying Solo had only 3 members (hardly a market share) they would have an extremely hard time convincing the courts they had built enough good will.
    Same with the bigfoot t-shirts. If the existing company had been around 10 years and done very little marketing and sold only 3 shirts, they too would find it extremely hard convincing the courts.

    As I said, it’s hazy at best and each case is taken on it’s own merit. There is no black and white.

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