Home – New Forums Starting your journey If a trademark exists overseas but isn’t registered here should you still use it?

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  • #976290
    CharlieT
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    Hi Guys

    I’m planning a new online service, the service does not currently exist in Australia but it does in the US. The name of the service has been trademarked in the US but not here. There are also variations of domain names available in both .com.au and .com as the US company is “the-service”.com.

    It is the best name as it explains what the service is so should I go ahead and register the name of the service as the trademark and domain names here or steer clear as having 2 separate companies providing the same service in 2 different countries is likely to still cause confusion? Thanks for your help, Charlie

    #1080709
    Anonymous
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    Hi Charlie,

    Interesting dilemma! I’m sure there’ll be a few people along to offer their opinions and advice soonish – although I suspect most of them are busy doing last minute shopping today!

    In the meantime, welcome to the forum, and all the best for the business,
    Jayne

    #1080907
    Anonymous
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    Hi Charlie,

    Interesting dilemma! I’m sure there’ll be a few people along to offer their opinions and advice soonish – although I suspect most of them are busy doing last minute shopping today!

    In the meantime, welcome to the forum, and all the best for the business,
    Jayne

    #1080710
    The Infotainer
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    not sure about legalities

    but calling your self the same as the other company is potentially risky

    If they do something wrong and it gets into the media as if often happens with things going on in the USA getting on Aussie news

    you will be connected to it

    depending on what the service is and how risky it is

    there will be alot of guys here saying grab the domain name now it’s only $22 and you can figure out the legalities of trade mark later.

    #1080909
    The Infotainer
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    not sure about legalities

    but calling your self the same as the other company is potentially risky

    If they do something wrong and it gets into the media as if often happens with things going on in the USA getting on Aussie news

    you will be connected to it

    depending on what the service is and how risky it is

    there will be alot of guys here saying grab the domain name now it’s only $22 and you can figure out the legalities of trade mark later.

    #1080711
    King
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    I am pretty sure trademarks are country specific – unless they have a global one. The issue come I think when your intity is also operating over there.

    There is a good IP member here who will offer you some great advice…just give her time ;)

    #1080911
    King
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    I am pretty sure trademarks are country specific – unless they have a global one. The issue come I think when your intity is also operating over there.

    There is a good IP member here who will offer you some great advice…just give her time ;)

    #1080712
    victorng
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    Trade marks are country specific but there are some other considerations. Ultimately you’re going to need professional advice on your specific situation.

    A few questions:

    Is the name descriptive? You say that it explains the service.

    Can the US service be used by Australians? Is it marketed to Australians?

    Cheers,
    Victor

    #1080912
    victorng
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    Trade marks are country specific but there are some other considerations. Ultimately you’re going to need professional advice on your specific situation.

    A few questions:

    Is the name descriptive? You say that it explains the service.

    Can the US service be used by Australians? Is it marketed to Australians?

    Cheers,
    Victor

    #1080713
    wizseoservicesaustralia
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    • Total posts: 59
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    You can register any trademark if it is not registered as global. But remember if you in future decide to take your trademark to international level then it will create difficulties. But you only want to target local market then yes you can register trademark.

    #1080913
    wizseoservicesaustralia
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    You can register any trademark if it is not registered as global. But remember if you in future decide to take your trademark to international level then it will create difficulties. But you only want to target local market then yes you can register trademark.

    #1080714
    JacquiPryor
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    Hi CharlieT,

    Further to the responses you have already received – yes, trademark protection is ‘country-by-country’ and therefore the owner’s rights exist within the country registered. Despite popular belief there’s not really a ‘global’ trademark registration. There is a system through which you can apply for multiple countries at one time, but ultimately you still choose particular countries and achieve rights only in those countries if successful.

    Further to the questions Victor has outlined that should be considered, you should also think about:

    1. when did the other people register in the USA? There are provisions that could allow them to still file into Australia and gain rights depending on when they filed their earliest application;

    2. Even if not registered in Australia – do they use/promote the trademark in Australia? If they began ‘use’ before you in Australia, then even if you proceeded and gained registration they would not be considered to be infringing your mark.

    3. Did you independently think of the same name or were you already aware of the US trademark/business?

    It is important to be mindful that when filing a trademark application, you are confirming that you use, or intend to use, the trademark for the goods/services honestly. If ever questioned on this (especially if the US company has any connection to your being questioned) you will need to explain when/how/why you chose the name. If you only decided on the name after learning of the US company, this could jeopardise the ability to prove ‘honesty’ in certain situations.

    As Victor mentioned, professional advice should be sought for your specific circumstances.

    Outside of the Trademark information, as you have indicated it’s an ‘online’ service, the potential for confusion is higher than in physical premises in each country. From a more personal opinion, rather than professional, I would be inclined to find a distictive ‘brand’ for your business than use the same as a potential competitor!

    Please feel free to post with questions, or send me a PM.

    All the best,

    #1080914
    JacquiPryor
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    Hi CharlieT,

    Further to the responses you have already received – yes, trademark protection is ‘country-by-country’ and therefore the owner’s rights exist within the country registered. Despite popular belief there’s not really a ‘global’ trademark registration. There is a system through which you can apply for multiple countries at one time, but ultimately you still choose particular countries and achieve rights only in those countries if successful.

    Further to the questions Victor has outlined that should be considered, you should also think about:

    1. when did the other people register in the USA? There are provisions that could allow them to still file into Australia and gain rights depending on when they filed their earliest application;

    2. Even if not registered in Australia – do they use/promote the trademark in Australia? If they began ‘use’ before you in Australia, then even if you proceeded and gained registration they would not be considered to be infringing your mark.

    3. Did you independently think of the same name or were you already aware of the US trademark/business?

    It is important to be mindful that when filing a trademark application, you are confirming that you use, or intend to use, the trademark for the goods/services honestly. If ever questioned on this (especially if the US company has any connection to your being questioned) you will need to explain when/how/why you chose the name. If you only decided on the name after learning of the US company, this could jeopardise the ability to prove ‘honesty’ in certain situations.

    As Victor mentioned, professional advice should be sought for your specific circumstances.

    Outside of the Trademark information, as you have indicated it’s an ‘online’ service, the potential for confusion is higher than in physical premises in each country. From a more personal opinion, rather than professional, I would be inclined to find a distictive ‘brand’ for your business than use the same as a potential competitor!

    Please feel free to post with questions, or send me a PM.

    All the best,

    #1080715
    Corey
    Member
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    Have you read “Issues around IP infringement, including details on how to enforce your IP right and how to deal with infringement” @ IP infringement | IP Australia

    Cheers
    Corey

    #1080915
    Corey
    Member
    • Total posts: 568
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    Have you read “Issues around IP infringement, including details on how to enforce your IP right and how to deal with infringement” @ IP infringement | IP Australia

    Cheers
    Corey

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