Home – New Forums Starting your journey Business name vs trademark name in different class

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  • #981952
    rollmop
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    I am looking to register a business name and doing the ASIC searches I can’t find anyone else with even a similar name, which is great. But there is someone with a similar trademark, although in a totally different classification.

    I’d like to call my business Meteraz Industries (example only) and don’t want to register a trademark just yet. I will be selling products from other companies, namely machines and machine tools (class 7) and possibly rebadging some of them with my own business name under license.

    If the existing trademark I found is simply Meteraz and registered in clothing, footwear & headgear (class 25), am I likely to receive approval for my business name or encounter any objection from the trademark owner?

    #1133876
    Solo Lawyer
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    A person only gets trademark protection in the class for which they have registered the trade mark. Therefore, if the similar trademark is for footwear and headgear and you want the trademark for machines and machine tools, the holder of the pre-existing trademark has no legal right to challenge your trademark application, because it is in a totally different class.

    IP Australia when determining whether to register your trademark would consider similar or identical trademarks which are registered within the same class that you are seeking to register your trade mark in.

    I hope that helps.

    Michael Terceiro
    Solo Lawyer
    http://www.terceiro.com.au

    #1133877
    rollmop
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    Thanks Michael, that makes a lot of sense.

    That other trademark is being used for as a women’s fashion brand so I do have another concern if one day I wanted to expand into selling protective clothing, hard hats, work boots or other work wear.

    Is that going to then conflict with their trademark, or not be a problem as long as those items were sold as the manufacturer’s branding and did not feature my own business name branding on them?

    As far as I understand it, if the trademark is for ‘clothing’ there is no distinction made between women’s blouses or workman’s pants. Some items I am thinking about may fall under Class 9 as safety clothing, but I think some may be hard to justify as being ‘specifically adapted for protection against accident or injury’.

    #1133878
    Kennethti
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    rollmop, post: 152403 wrote:
    Thanks Michael, that makes a lot of sense.

    That other trademark is being used for as a women’s fashion brand so I do have another concern if one day I wanted to expand into selling protective clothing, hard hats, work boots or other work wear.

    Is that going to then conflict with their trademark, or not be a problem as long as those items were sold as the manufacturer’s branding and did not feature my own business name branding on them?

    As far as I understand it, if the trademark is for ‘clothing’ there is no distinction made between women’s blouses or workman’s pants. Some items I am thinking about may fall under Class 9 as safety clothing, but I think some may be hard to justify as being ‘specifically adapted for protection against accident or injury’.

    If there is a pre-existing trade mark in the classes that you wish to trade mark in there would likely be opposition from both IP Australia and the existing trade mark holder.

    It isn’t impossible to overcome opposition but you will likely need evidence that you have the right to register the trade mark, such as proof that you used the trade mark before the other guy, or that the trade mark that you are trying to trade mark looks, feels, or is sufficiently distinguished from the pre-existing trade mark. This is usually a high bar.

    If the pre-existing trade mark is also a very famous one stretching over multiple classes, you also may be stopped from registering your own trade mark.

    #1133879
    rollmop
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    Is that even still the case if I am a operating a store with a similar same as that other fashion brand trademark, but I am not selling my own brand but another company’s branded products? Eg, Hard Yakka, Bisley etc

    #1133880
    JacquiPryor
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    Hi there,

    Firstly to answer this question:

    am I likely to receive approval for my business name

    Yes. The business names office will not check the IP Australia/trademarks database in determining whether you can register the business name. So long as the same business/company name is not already registered you should be get business name approval.

    It would then be up to the trademark owner to take whatever action they felt appropriate if they felt your use of your business name was an infringement of their rights. Whether this is ‘likely’ to occur is near impossible to guess.

    If you were to apply for a trademark (I realise you mention you’re not ready to do so yet), you would likely file for retail services. This class is considered related to the class 25 for clothing, because you could very well be selling clothing. It’s all about whether confusion is likely – so, if it’s likely a consumer would see the name of your retail operation and confuse it with the brand of clothing already registered then the issue arises. It’s not uncommon for a clothing supplier to carry their own brand, so, there is a definite relationship between ‘retail services’ and ‘clothing goods’. An easy way to overcome this with the Trademarks Office is to restrict your services to exclude the retail of clothing. This would likely see the objection addressed but if you’re planning to sell clothing then it’s obviously not an ideal solution.

    Obviously if the other people are in ‘women’s fashion’ then your sale of work/safety gear of differing brands might not hit their radar as a problem, but, there is a risk it will – and – it does sound like it might be an issue if you do wish to register your trademark at some point. Without knowing the full details of the trademark in question it can be tricky to provide solid answers.

    I hope the above assists.

    #1133881
    Solo Lawyer
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    I think your question has already been answered very capably by two other soloists.

    IP Australia could reject your application at the outset if it formed the view that you were seeking trademark protection in a class where there was already a similar trademark. If IP Australia did not reject your application, another trademark holder could object to the registration of your trademark. This is where trademark registrations can get expensive – ie responding to objections from other trademark holders.

    IP Australia have something called TM Headstart which can give you an early assessment of the registrability of your proposed trade mark. You should probably seek to use this service to find out if your proposed trademark is likely to make it through the registration process.

    If you are operating a store with a similar name to the fashion brand trademark, you may get sued by the owner of that trademark for breaching their exclusive right to use that trademark. If that were to happen, it would be very expensive as the trademark holders can seek a wide range of remedies for a breach of their trademark, including an account of profits (ie the profits you made from selling products with a deceptively similar trademark).

    Bye

    Michael Terceiro
    Solo Lawyer
    http://www.terceiro.com.au

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