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  • #1000486
    LunaMarga
    Member
    • Total posts: 45

    Hello

    I have registered an Australian trademark “The Soulful Goddess” and have noticed that someone else is using this name for their facebbok and instagram accounts.

    What is the protocol for asking them to stop using my trademark please?
    Can I just ask them to stop?

    Thanks in advance
    Chelle

    #1224549
    Paul – FS Concierge
    Moderator
    • Total posts: 3,117
    LunaMarga, post: 271550, member: 55789 wrote:
    Hello

    I have registered an Australian trademark “The Soulful Goddess” and have noticed that someone else is using this name for their facebbok and instagram accounts.

    What is the protocol for asking them to stop using my trademark please?
    Can I just ask them to stop?

    Thanks in advance
    Chelle

    [USER=20176]@JacquiPryor[/USER] is a Trademark Guru.

    Hopefully she will stop by and offer advice.

    Cheers
    Paul

    #1224550
    LunaMarga
    Member
    • Total posts: 45

    As another point, I have just discovered that someone has registered a business name “The Soulful Goddess” with ASIC.
    Can I contest this?

    #1224551
    Paul – FS Concierge
    Moderator
    • Total posts: 3,117

    It’s starting to sound like a laundry list.

    And it might get complex (and costly).

    Good luck sorting it out.

    #1224552
    LunaMarga
    Member
    • Total posts: 45

    Update
    I have had correspondence with the infringing party and she has withdrawn or cancelled any association with my trade mark.

    #1224553
    JacquiPryor
    Member
    • Total posts: 2,344

    [USER=55789]@LunaMarga[/USER]

    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 :)

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