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  • #1119017
    JacquiPryor
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    Hi Anna – good question… personally, I am of the view it’s now more important to register your trademarks because of this national system… (Now for my shameless plug – here’s an article I wrote about it ;))

    But – to answer your questions, it’s likely to depend on two main factors:

    1. What are the industries/activities of Business A and Business B? (i.e. are they dealing in similar goods/services?); and

    2. Who used it first? (And, how long have each party used the name for?)

    Yes – Business A can register their trademark for their particular goods/services of interest. If Business B is in the same industry and commenced use after Business A then there may be an infringement issue. (You are taken not to infringe a trademark if you actually can demonstrate you used the name before the trademark was applied for, or before the first use of the trademark owner – whichever is the earlier date). There are also provisions though that may make it ok for Business B to continue using the name, mostly dependent on how long they’ve already used it for. It is a valid defence to a claim of infringement if a court would be of the opinion that person is also entitled to registration – this might occur if they could demonstrate they’ve got a sufficient period of use of the name running concurrently with the trademark being registered.

    (Hope that makes sense?!) Ultimately, infringement matters and the like are really a bit of a case-by-case scenario. Each situation has its own factors that all go into determine whether infringement has in fact occurred.

    #1119018
    kathiemt
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    Even before the national register it was important. I had people in another state using my business name and had an article published in a local paper. Because I had my trademark and someone I knew saw the article in that state, they told me about it and I contacted the person who was using the business name. They had to close down their website and get things changed, including their domain (how many versions of a domain name did I need to buy???) before they could operate again.

    A client of mine had her business name for 11 years and never trademarked it, although I suggested several times that she should. Someone else came along with a product with the same name and they trademarked it. Because it was in the same category as her business she tried to fight their use of the Trademark but lost and had to totally change her business name and information. All that branding, letterhead, business cards, DVDs and CDs, books, website and other stuff – all of it had to be rebranded and repackaged at considerable cost.

    It’s not worth ignoring the importance of a Trademark.

    #1119019
    Kennethti
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    Well, in relation to infringement, it’s not exactly clear cut either. The Trade Marks Act does give an exemption for honest concurrent usage of a similar trade mark so long as the allegedly infringing mark was used for a continuous period of time before the other mark was registered.

    #1119020
    JacquiPryor
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    The example of your client is an interesting one Kathie. It’s a little odd to me that if they had used the name for 11 years and someone started using/trademarked after she first began this would normally give a person (in this case your client) a relatively straight forward case based on prior use. This, to me, highlights the importance of registration of course, but also ensuring professional assistance is sought whenever you’re unsure in the area of trademarks. Thanks for sharing :)

    #1119021
    kathiemt
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    Yes, we thought she should have gotten preference for the name too, for having used it so long but it sounds like these other people got a legal eagle in to fight it for them and she didn’t have the funds to fight it. So just let it all go. Mind you, the cost of rebranding, it might have been worth paying to fight it. This happened about 5 years ago.

    #1119022
    Kennethti
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    JacquiPryor, post: 133855 wrote:
    The example of your client is an interesting one Kathie. It’s a little odd to me that if they had used the name for 11 years and someone started using/trademarked after she first began this would normally give a person (in this case your client) a relatively straight forward case based on prior use. This, to me, highlights the importance of registration of course, but also ensuring professional assistance is sought whenever you’re unsure in the area of trademarks. Thanks for sharing :)

    I find that really odd as well, however that being the case, I can understand that even if your client can retain usage of the name, they cannot stop their competitor from using their trade marked brand. In such a situation perhaps further distinguishing their brand by going through a re-branding process might be better.

    #1119023
    kathiemt
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    Kennethti, post: 133859 wrote:
    I find that really odd as well, however that being the case, I can understand that even if your client can retain usage of the name, they cannot stop their competitor from using their trade marked brand. In such a situation perhaps further distinguishing their brand by going through a re-branding process might be better.

    Unfortunately I didn’t really know anyone I could ask for advice and had to go by what she was telling me at the time. If it were today, it would be a different matter, I’d know where to come and who to ask ;)

    She’s moved on to doing other things these days and I haven’t worked with her for 3 years now. It was a shame though. I trademarked mine as I had many people commenting on what a good name it was and I felt I needed to protect it.

    #1119024
    The Copy Chick
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    Thanks for the great answer Jacqui :)

    I’ve been thinking about trademarking my name, but since I originally registered the name in 2005, there is now a Copybreak in both QLD and Wales (as in UK).

    A quick check of the trademark registry shows it hasn’t been trademarked yet, but I didn’t know if I’d be able to since both these businesses registered their name in 2009. If I was to register, is it up to my discretion as to whether I then force the other company (at least in Australia) to change their name, or are they breaching regardless of what I want to do?

    #1119025
    DavidThomas
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    I think you would have to force them to change names and that gets complex, not to mention they might fight back.

    Maybe a rebrand would work best..

    #1119026
    JacquiPryor
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    f I was to register, is it up to my discretion as to whether I then force the other company (at least in Australia) to change their name, or are they breaching regardless of what I want to do?

    Really it’s up to you as the trademark owner (let us assume you successfully register etc) to police/enforce your rights as you see fit. Your Australian rights would not provide you the right to do anything about the business in Wales though.

    Given the other business has been around, in Qld, since 2009 you might find this falling into a bit of an uncertain area. Given they’ve also used the name now for a few years they’re going to be less likely to give up with out a fight as opposed to someone that registered a business name last week.

    Assuming they are in the same business type as you then on the surfact it appears you would be within your rights (if you had the fully registered TM) to take action if you wanted to… If the 2009 Qld business could demonstrate significant use of the same name since 2009 they may be able to convince a court (if it ever came to that) that they are also entitled to register the name as a TM because of their extensive use of the name. A court would then basically decide if they are infringing or they have demonstrated their right to also register.

    Apart from being able to take action against others, the biggest benefit IMO of a registered trademark is you have the right to use that trademark. This means, another trademark owner couldn’t take action against you for infringement – or make threats of such action etc. It truly gives you the safety in using/promoting your name. In your situation, what if the Qld company did register the name? They might not get far with action against you before you used it first – but once registered you would not be able to stop them using the name – and, their existing registration would then make it more difficult (not impossible) for you to later gain registration if you wanted to.

    Yes, we thought she should have gotten preference for the name too, for having used it so long but it sounds like these other people got a legal eagle in to fight it for them and she didn’t have the funds to fight it. So just let it all go. Mind you, the cost of rebranding, it might have been worth paying to fight it. This happened about 5 years ago.

    I cannot tell you the number of a times I’ve written articles that include pointing out that the cost of rebranding and/or ‘fighting’ over names will almost always exceed the cost of registering in the first place. Your example Kathie is not an uncommon one. The ‘smaller’ guy often can’t match the bigger guy’s bank account so has to give up, whether fair or not. It truly does highlight the logic in just registering in the first place!

    I often ask people (and wonder) why they are fine with paying hefty insurance premiums to protect tangible assets yet find the cost of protecting intangible assets ‘not worth it’?? I kind of view trademark protection as “brand insurance”, and, in a lot of cases the cost is a portion of an insurance policy (and you don’t have to renew it every 12 months!).

    #1119027
    Nathan Hartnett
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    Hi,

    We had trademark issues when we first started too. Our business name was “Titan Jewellery”, but after nearly a year of trading, we were contacted by an Indian company who had the trademark in Australia. They didn’t use it, or even trade in Australia, but they had registered it a couple of years before we started trading, just in case they ever wanted to expand internationally. We sought advice, and the answer was basically “live and learn – change your name”. So we changed our name, and made sure that this time we did all of the (very simple) checks, as well as lodged our own trademarks. It then allows you to sleep well at night, and concentrate on your business (instead of worrying about when another legal letter will turn up on your doorstop).

    Good luck!

    #1119028
    JacquiPryor
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    Thanks for sharing your experience Nathan,

    Should others be along who find themselves in a similar situation:

    They didn’t use it, or even trade in Australia, but they had registered it a couple of years before we started trading, just in case they ever wanted to expand internationally. We sought advice, and the answer was basically “live and learn – change your name”.

    Whilst each case is different in these situations – it should be noted that in Australia there are actually provisions under Trade Mark Law that can see a trademark being removed if it is not used – and/or – if the owner had no intention in good faith to use it at the time they first filed the application. There’s particular time frames in place as to when a request to remove a mark due to ‘non-use’ can be filed – and possibly was not applicable in Nathan’s situation, but, is worth keeping in mind should you ever receive a letter of demand from a trademark owner who does not appear to actually be using the trademark….

    #1119029
    The Copy Chick
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    Thanks for yet another awesome reply Jacqui :) I wouldn’t be looking to put anyone’s nose out of joint, but I agree it would be smart to protect myself from someone who might.

    I may have to continue this conversation with you on more professional terms.

    #1119030
    JacquiPryor
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    Sounds good Anna. (Although, not sure about ‘professional terms’ on a Friday afternoon ;)) Have a good weekend and we’ll speak soon.

    #1119031
    CardsOnline
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    Kind of an off topic question: What sounds better in a business name, Luxury or Luscious ?

    Luxury is easier to spell when doing a search.

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