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  • #1000390
    ccastell88
    Member
    • Total posts: 13

    Hi Guys,

    I have a domain name and website which apparently according a trademark expert is too generic to trademark.

    Now i don’t care too much about registering a trademark, I’m more concerned with a competitor registered the trademark and then tried to sue me for my website or something.

    Just wondering could this occur? Or am i being too paranoid.

    Also since i can’t seem to get a trademark is there any other protections i could implement?

    Cheers!

    #1224189
    Paul – FS Concierge
    Moderator
    • Total posts: 3,127

    [USER=20176]@JacquiPryor[/USER] may be able to help.

    One thought that occurs to me is that if your advice is that your name is too generic for you to register a trademark against, then same goes for somebody else right?

    #1224190
    ccastell88
    Member
    • Total posts: 13

    Yeah correct, so someone else shouldn’t technically be able to register it as a trademark.

    #1224191
    JacquiPryor
    Member
    • Total posts: 2,344

    Hey [USER=48167]@ccastell88[/USER]

    These sorts of scenarios are always case by case, but, for information purposes:

    • A trade mark (by its mere definition) is something that can distinguish your goods/services from others. Most often that’s a name or a logo. Names that are generic/descriptive can be more difficult to register (and enforce) because they’re usually not capable of distinguishing those goods/services. For example, “Melbourne Hairdresser” is very descriptive so would be VERY hard to secure as a registered trade mark, and, also hard to enforce.
    • If you use your name in a logo, sometimes filing the logo as a trade mark instead can avoid this sort of issue.
    • If a competitor tried to register the same name that is generic/descriptive, they would face the same issue and it would be hard for them to register (depending on the name, not necessarily impossible but difficult).
    • Even if a competitor managed to register, if you are the first user of the name this could be a defense to any allegation that your use is infringing their trade mark in Australia
    • But, if the competitor used that name first and has a reputation and got the trade mark registered then they could ask you to rebrand.

    Also keep in mind if your brand is generic that this means competitors could start using similar terms in their business and you may not be able to stop them. Whilst you said you don’t mind if you can or cannot trade mark, you just don’t want to be sued – it’s important to consider the marketing/promotional side of your business… if you use a generic name as your brand and build up following, will it be an issue if a competitor uses the same or similar name/phrase and you can’t necessarily stop them?
    As I said, it is case by case. I’d be happy to hear from you privately at jacqui@mmwtrademarks.com.au with some more detail to answer more specifically. Otherwise, I hope the above helps?

    All the best :)

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