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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  • #1080916
    CharlieT
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    JacquiPryor, post: 101253 wrote:
    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,

    Thanks everyone, and thanks Jacqui, I think the safest thing to do would be to come up with a new variation of the name or brand, that way there are no issues. No point setting yourself up for trouble down the track hey? All the best, Charlile

    #1080716
    CharlieT
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    • Total posts: 3
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    JacquiPryor, post: 101253 wrote:
    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,

    Thanks everyone, and thanks Jacqui, I think the safest thing to do would be to come up with a new variation of the name or brand, that way there are no issues. No point setting yourself up for trouble down the track hey? All the best, Charlile

    #1080717
    JacquiPryor
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    CharlieT, post: 101732 wrote:
    Thanks everyone, and thanks Jacqui, I think the safest thing to do would be to come up with a new variation of the name or brand, that way there are no issues. No point setting yourself up for trouble down the track hey? All the best, Charlile

    Hi Charlie,

    Just keep in mind a ‘variation’ of the name could be met with the same potential issues/face the same questions as using the same name.

    Purely as an example – if the ‘name’ is ABC and you simply went with ABC 2012 the issues remain.

    I would suggest once you coin a name you are happy with you seek further advice and ensure it’s “safe” to use, and of course consider registering it yourself as a trademark :)

    All the best,

    #1080917
    JacquiPryor
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    CharlieT, post: 101732 wrote:
    Thanks everyone, and thanks Jacqui, I think the safest thing to do would be to come up with a new variation of the name or brand, that way there are no issues. No point setting yourself up for trouble down the track hey? All the best, Charlile

    Hi Charlie,

    Just keep in mind a ‘variation’ of the name could be met with the same potential issues/face the same questions as using the same name.

    Purely as an example – if the ‘name’ is ABC and you simply went with ABC 2012 the issues remain.

    I would suggest once you coin a name you are happy with you seek further advice and ensure it’s “safe” to use, and of course consider registering it yourself as a trademark :)

    All the best,

    #1080718
    Visionlux
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    • Total posts: 91
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    CharlieT, post: 101732 wrote:
    Thanks everyone, and thanks Jacqui, I think the safest thing to do would be to come up with a new variation of the name or brand, that way there are no issues. No point setting yourself up for trouble down the track hey? All the best, Charlile

    Probably best to just come up with an entirely new name and not stress too much over the perceived awesomeness of the old name.
    At the end of the day, while a great name is nice it has absolutely no bearing on how well your business will do. I could cite 1000s of examples of terrible names that are fronting incredibly successful businesses.

    #1080918
    Visionlux
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    • Total posts: 91
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    CharlieT, post: 101732 wrote:
    Thanks everyone, and thanks Jacqui, I think the safest thing to do would be to come up with a new variation of the name or brand, that way there are no issues. No point setting yourself up for trouble down the track hey? All the best, Charlile

    Probably best to just come up with an entirely new name and not stress too much over the perceived awesomeness of the old name.
    At the end of the day, while a great name is nice it has absolutely no bearing on how well your business will do. I could cite 1000s of examples of terrible names that are fronting incredibly successful businesses.

    #1080719
    webtrade
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    • Total posts: 84
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    Hi CharlieT,

    It might be best to stay clear of variations of the business name as well. You sound well aware of the benefits and risks of each option. Especially if your competitor is much bigger than your business is, are you prepared to go through any unplanned legal proceedings and business disruptions even if you do have the legal right to use that business name/variations of that business name? Are the benefits big enough to take on these types of risks?

    #1080919
    webtrade
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    • Total posts: 84
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    Hi CharlieT,

    It might be best to stay clear of variations of the business name as well. You sound well aware of the benefits and risks of each option. Especially if your competitor is much bigger than your business is, are you prepared to go through any unplanned legal proceedings and business disruptions even if you do have the legal right to use that business name/variations of that business name? Are the benefits big enough to take on these types of risks?

    #1080720
    Jenish Pandya
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    what everyone has said is absolutely true, i just wanted to add a bit of what i have seen by my own eyes regards same names.

    I went to Uganda recently and saw a store called “Woolworths” same exact spelling as the woolies/woolworths here in aus. The only difference it was a clothing store unlike here.

    So if u really love the name that much and u only wanna trade in aus then probably go for it. just dont relate yourself to the US company.

    cheers
    Jenish

    #1080920
    Jenish Pandya
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    • Total posts: 104
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    what everyone has said is absolutely true, i just wanted to add a bit of what i have seen by my own eyes regards same names.

    I went to Uganda recently and saw a store called “Woolworths” same exact spelling as the woolies/woolworths here in aus. The only difference it was a clothing store unlike here.

    So if u really love the name that much and u only wanna trade in aus then probably go for it. just dont relate yourself to the US company.

    cheers
    Jenish

    #1080721
    Mumnesia
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    • Total posts: 37
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    Prior trading rights will stand up in court if it is contested.
    My mother had made a product long before I was even born, but never legally protected her design. After she passed away, I continued to produce it alongside of my own product as it was complimentary.
    I was hit with an ‘Infringement of Copyright’ last year by a company who registered & trademarked the design in 2001.
    I had noticed the company a few years ago and was angry as it was a direct copy of my mothers. I mistakenly thought that since they registered the design, I could do nothing.
    Thankfully we had a snap happy dad and kids, the photographic evidence over the years was enough for the court to favour our prior trading rights. The other company’s registration was to be revoked, but we settled on royalties to my family instead so they could keep their business.
    Personally I wouldn’t put such a limitation on a business thinking it might only ever be Australian based, you might just never know where it can lead.
    I never would have thought in my wildest dreams that my own product would be sold overseas when I first started, but it is now.
    Your business sounds interesting and wish you all the best of luck

    #1080921
    Mumnesia
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    • Total posts: 37
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    Prior trading rights will stand up in court if it is contested.
    My mother had made a product long before I was even born, but never legally protected her design. After she passed away, I continued to produce it alongside of my own product as it was complimentary.
    I was hit with an ‘Infringement of Copyright’ last year by a company who registered & trademarked the design in 2001.
    I had noticed the company a few years ago and was angry as it was a direct copy of my mothers. I mistakenly thought that since they registered the design, I could do nothing.
    Thankfully we had a snap happy dad and kids, the photographic evidence over the years was enough for the court to favour our prior trading rights. The other company’s registration was to be revoked, but we settled on royalties to my family instead so they could keep their business.
    Personally I wouldn’t put such a limitation on a business thinking it might only ever be Australian based, you might just never know where it can lead.
    I never would have thought in my wildest dreams that my own product would be sold overseas when I first started, but it is now.
    Your business sounds interesting and wish you all the best of luck

    #1080922
    JacquiPryor
    Member
    • Total posts: 2,344
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    Mumnesia, post: 102391 wrote:
    I was hit with an ‘Infringement of Copyright’ last year by a company who registered & trademarked the design in 2001.

    Hi Mumnesia – you are right – evidence of ‘prior use’ will most often ‘win’ a case like this.

    Just to clarify for anyone else that may be along and read this post – Copyright, Registered Trademarks and designs are three separate forms of intellectual property (often cases will involve all three). Copyright is an automatic right generally granted to the original author of a ‘work’ that is categorised as copyright; trademarks are ‘signs’ (be that a name, logo, slogan etc) that are used to distinguish one person’s products/services from those of others and ‘designs’ relate to the overall appearance of a product – the look.

    I mention this more so in case someone else is faced with such an issue, especially with allegation of ‘design infringement’ – a design is only registrable if is new and distinct, and further more, a person may only make such allegations of design infringement if they have gone through the process of having their design examined and certified – if they haven’t done so and make this claim this is a breach of the design laws operating in Australia. If ever you become aware that someone has registered a design and don’t consider it to be new and distinct it is possible to make such a request for examination on another person’s design.

    Also, designs have a maximum protection period of 10 years under the current Designs Act in operation in Australia so anyone receiving such letters/claims concerning design infringement would be encouraged to really check out whether the person sending the claim truly has the right to do so; if allegations are made without the examination/certification, then it is even posisble to take action against the person for making a ‘groundless threat’.

    Anyway – Mumnesia, thanks for sharing your post and experience – I think that there is a lot of value for others who may one day be in a similar situation and ‘assume’ there’s not much they can do about it and your post clearly shows that you can do something!!

    #1080722
    JacquiPryor
    Member
    • Total posts: 2,344
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    Mumnesia, post: 102391 wrote:
    I was hit with an ‘Infringement of Copyright’ last year by a company who registered & trademarked the design in 2001.

    Hi Mumnesia – you are right – evidence of ‘prior use’ will most often ‘win’ a case like this.

    Just to clarify for anyone else that may be along and read this post – Copyright, Registered Trademarks and designs are three separate forms of intellectual property (often cases will involve all three). Copyright is an automatic right generally granted to the original author of a ‘work’ that is categorised as copyright; trademarks are ‘signs’ (be that a name, logo, slogan etc) that are used to distinguish one person’s products/services from those of others and ‘designs’ relate to the overall appearance of a product – the look.

    I mention this more so in case someone else is faced with such an issue, especially with allegation of ‘design infringement’ – a design is only registrable if is new and distinct, and further more, a person may only make such allegations of design infringement if they have gone through the process of having their design examined and certified – if they haven’t done so and make this claim this is a breach of the design laws operating in Australia. If ever you become aware that someone has registered a design and don’t consider it to be new and distinct it is possible to make such a request for examination on another person’s design.

    Also, designs have a maximum protection period of 10 years under the current Designs Act in operation in Australia so anyone receiving such letters/claims concerning design infringement would be encouraged to really check out whether the person sending the claim truly has the right to do so; if allegations are made without the examination/certification, then it is even posisble to take action against the person for making a ‘groundless threat’.

    Anyway – Mumnesia, thanks for sharing your post and experience – I think that there is a lot of value for others who may one day be in a similar situation and ‘assume’ there’s not much they can do about it and your post clearly shows that you can do something!!

    #1080923
    Visionlux
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    • Total posts: 91
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    I would also add that the more unique your name, the less time you will spend worrying about SEO.

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