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  • #973231
    travelmaster
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    Here is a general question to any legal minds here on the forum.

    We have registered our business name as a trademark. This process is now complete and we have the certificate.
    So the question is: Does having a registered trademark give me legal rights to stop anyone using the same or very, very similar business name, operating in another state but registered as a business name BEFORE my trademark registration.

    Just wondering if anyone heard of any such case before.

    #1060516
    DreamscanbeVisions
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    To my knowledge the business name is nothing compared to a trademark. If they wanted to own the name they should’ve trademarked it hence you win lol.

    Just call law access to confirm this.

    #1060517
    BrettM33
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    DreamscanbeVisions, post: 74779 wrote:
    To my knowledge the business name is nothing compared to a trademark. If they wanted to own the name they should’ve trademarked it hence you win lol.

    Just call law access to confirm this.

    That is incorrect. If they registered their business name BEFORE you registered the trademark then there isn’t anything you can do about it, you can only take action against registrations after the fact.

    #1060518
    victorng
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    This is a common question / situation. Without going into too much detail, the general principle is that Australia is a ‘first to use’ rather than ‘first to register’ jurisdiction. This means that the first person to use a trade mark is the one who generally has superior rights.

    BUT …

    1. it is more complicated and costly to enforce an unregistered trade mark
    2. removing a registered trade mark from the register generally requires Federal Court action
    3. there is the concept of ‘honest and concurrent use’ whereby a person who adopts a mark honestly and in good faith may be able to obtain rights in respect of it

    Cheers,
    Victor

    #1060519
    Kennethti
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    victorng, post: 74804 wrote:
    This is a common question / situation. Without going into too much detail, the general principle is that Australia is a ‘first to use’ rather than ‘first to register’ jurisdiction. This means that the first person to use a trade mark is the one who generally has superior rights.

    BUT …

    1. it is more complicated and costly to enforce an unregistered trade mark
    2. removing a registered trade mark from the register generally requires Federal Court action
    3. there is the concept of ‘honest and concurrent use’ whereby a person who adopts a mark honestly and in good faith may be able to obtain rights in respect of it

    Cheers,
    Victor

    Victor is on the ball with this.

    Just to add, in general, the Trade Marks Act does not consider that it is an infringement if the unregistered mark has been continuously been in use from a date before the date of registration of the registered mark.

    Please note that if you want specific advice it is best to speak to a solicitor or trade marks attorney.

    I also write a trade marks blog, and it can be found at http://www.trademark-lawyer.com.au

    #1060520
    travelmaster
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    Thanks everyone for your inputs especially the ones from a legal angle.

    It’s a good lesson for me (and anyone else who is considering the trademark registration) – definitely do it at the same time as you register your business name.

    #1060521
    JacquiPryor
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    Hi All, sorry for the late contribution to this post… Just wanted to add a couple of things to the posts previously made:

    The original question was:

    Does having a registered trademark give me legal rights to stop anyone using the same or very, very similar business name, operating in another state but registered as a business name BEFORE my trademark registration.

    Firstly, and MOST importantly – your business name will be registered as a trademark for certain goods/services… if the same or similar name in another state trades in connection with unrelated goods/services, then there’s really no infringement regardless of whether they registered first as a business or you did.

    Secondly, and also a critical point in determining ‘infringement’ – is that, in order to infringe a trademark the other person must be using it as a trademark – merely having a registered business name will not likely constitute “use as a trademark”. – A trademark has a legal definition and if the other party isn’t using it in that manner, there can’t be an infringement.

    Also, I note Kennethti’s earlier post that the “Trade Marks Act does not consider that it is an infringement if the unregistered mark has been continuously been in use from a date before the date of registration of the registered mark.”

    Just to add briefly, the Trademark Act actually refers to the date of registration of first use by the registered owner, which ever is earlier.

    I make this point, because in this particular discussion, we don’t actually know who used the trademark first, which is really what all other advice and information is reliant on.

    We know that the trademark was registered on X date, and someone else has a business name registered for X date… but, if the owner of the trademark used it before their trademark was registered, and since a time before the other business name holder, they would still be in a position to consider infringement action.

    Having said all of that – an ‘up side’, if we assume the business name has been used and promoted as a trademark (unregistered) for a longer period of time – the trademark owner has been granted the right to use their trademark in connection with goods/services, so it would be extremely difficult and costly for another party to now deregister their trademark and stop their use (as Victor outlined in his post).

    Hope the above is food for thought to others that may be asking this question, as it is a common one.

    All the best,

    #1060522
    travelmaster
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    JacquiPryor, post: 75492 wrote:
    Hi All, sorry for the late contribution to this post… Just wanted to add a couple of things to the posts previously made:

    Also, I note Kennethti’s earlier post that the “Trade Marks Act does not consider that it is an infringement if the unregistered mark has been continuously been in use from a date before the date of registration of the registered mark.”

    Just to add briefly, the Trademark Act actually refers to the date of registration of first use by the registered owner, which ever is earlier.

    I make this point, because in this particular discussion, we don’t actually know who used the trademark first, which is really what all other advice and information is reliant on.

    We know that the trademark was registered on X date, and someone else has a business name registered for X date… but, if the owner of the trademark used it before their trademark was registered, and since a time before the other business name holder, they would still be in a position to consider infringement action.

    Having said all of that – an ‘up side’, if we assume the business name has been used and promoted as a trademark (unregistered) for a longer period of time – the trademark owner has been granted the right to use their trademark in connection with goods/services, so it would be extremely difficult and costly for another party to now deregister their trademark and stop their use (as Victor outlined in his post).

    Hope the above is food for thought to others that may be asking this question, as it is a common one.

    All the best,

    Thank you so much Jaqui for this info.
    Yes, it is a rather convoluted case so perhaps I can shed some more light on this and especially the timeline as it may make it easier to determine if there is anything in it for me i.e. if I have any grounds for further legal action.

    firstly – we are definitely talking about the same “category” i.e. selling travel

    – the first “use” of the of the “trademark” i.e. the exact words/name ( Travel by Design) was when I registered it as a domain name in Australia and immediately used it as a subpage on my website (not sure if this constitutes “first use” but I’m sure it can be evidenced and dated exactly to the day)
    – then, at least a year later the other party registed it as a Business name, but in a in a different state
    – then I registered it as a business name in NSW and started trading under that name in NSW
    – then I registered it as a trademark

    what do you think ?
    does it make it eny easier to see if there is anything in it for me.

    #1060523
    JacquiPryor
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    travelmaster, post: 75497 wrote:
    – the first “use” of the of the “trademark” i.e. the exact words/name ( Travel by Design) was when I registered it as a domain name in Australia and immediately used it as a subpage on my website (not sure if this constitutes “first use” but I’m sure it can be evidenced and dated exactly to the day)
    – then, at least a year later the other party registed it as a Business name, but in a in a different state
    – then I registered it as a business name in NSW and started trading under that name in NSW
    – then I registered it as a trademark

    .

    Thanks for that information – certainly helps to look into it a bit further and comment further.

    The Victorian business name I have found was registered in Feb 2001. So, from your information, it sounds like you registered the domain name and immediately used as a subpage at least as early as February 2000? This will count as a first use, so long as the subpage was promoting the “Travel by Design” trademark (versus simply being a domain registration/web address) – at the moment, specifically I have found http://www.travelbydesign.com.au/pages/travelbydesign.htm – which clearly shows the name being used/promoted as a trademark. If it has appeared in this, or similar manner since before the other people first used the name in a similar manner, then yes, it would appear you still have grounds for action.

    I do comment though, as you have acknowledged you used the name for quite sometime before officially registering it as a business name and trading as such. It is possible the Victorian business also used/promoted as a trademark before registering their business name, and may have a prior use/right.

    So – from the information seen, if we assume that you have the ‘first use as a trademark’ – you may still be seen as the rightful owner and have a case. However, another point to note is that a person may have a defense to infringement if a court is of the opinion they would be able to also obtain registration. This could occur when a person has extensive use of their trademark despite the existence of an existing trademark and can prove it.

    If they were to apply for a trademark, for general examination they would only need to prove they used/promoted since prior to your registration as a trademark and that their use has been continuous. It would then be up to you to oppose any application they may make and prove you are the rightful owner and first user.

    And, some brief searches (Google/White Pages) and I am not actually finding the Victorian party that has registered this business name. IF you have any knowledge of a website/directory or similar where it is promoted, please let me know. If they are not actively using and promoting as a trademark as mentioned, there may not be grounds for infringement action, as this is the ‘key’ criteria.

    Trademark Law does relate to some other areas, which can include things like ‘passing off’ (if you can prove a reputation and goodwill in your name, in the marketplace and that they are making some misrepresentation that ‘passes’ off the services as being yours); engaging in misleading and deceptive conduct (if the result of them using the same name as you, and as your trademark is deceptive and misleading the public/consumers this could be a factor to be considered) etc. (This is provided for information only, and is not legal advice).

    I realise there’s a lot to consider… so, in short – can you confirm the date you first registered the domain name, and then promoted the name at your subpage. And, let me know if you are aware of ‘where’ they are using the same name other than simply having the business name registration in Victoria.

    One of the rights afforded to you with the registration of your trademark is the right to USE the mark registered for those services. This can often be a more protective right than whether you are able to take infringement action against another party or not, as it has provided you with the safety and knowledge no-one else can stop you using the name for those services except in very special circumstances, which don’t appear to be valid here based on the information read.

    I look forward to reading your further post.

    #1060524
    travelmaster
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    Jacqui,

    Thanks so much for your input.
    I think I’m going to leave things as they are, certainly not in the mood for any legal actions at this stage. Maybe in the future, when the brand TBD becomes the most famous travel name in Australia. Just need to think how to get to that point without breaking the bank..

    Rgds

    #1060525
    JacquiPryor
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    Hi Voytek,

    Just a quick note to consider – whilst I entirely appreciate that legal action is off putting… you don’t want to wait too long if there is a case here. If you leave it for ages and then decide you want to do something about it, the other party may have accrued further use/reputation themselves and have some grounds to a defense – and, in the event you end up in any court action you could be asked to explain why you left it so long… could almost appear that you don’t really care about your intellectual property and rights that go along with it.

    Just a point to keep in mind as you move forwards.

    All the best,

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