Home – New Forums Other discussions Trademarks – just what can I say?

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  • #987861
    AM_FrenchsForest
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    Hi soloists,
    I have imported a specialist medical product from Germany. It has a name which is in common use internationally, across many companies. The name is the way of identifying a product type, rather than a brand. An Australian company has trademarked this name as their brand for local use.

    Local consumers identify this brand as the product type, so it is problematic to market my product without any reference to it. People won’t find it, as they’re searching the internet with the brand name.

    So while I can’t use the trademarked product name, what I would like to know is if I can reference it in anyway. Eg, ‘Our new product is similar to “Trademarked name goes here”‘.

    Thanks!

    #1164627
    AM_FrenchsForest
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    Given the lack of responses received to my forum posting, I found a trademark specialist to answer my queries. Jacqui Pryor at Mark My Words Trademark Services came recommended by a colleague: http://mmwtrademarks.com.au/

    I was very pleasantly surprised by the level of service I received. I’ve had some poor experiences when dealing with the legal profession in the past, and this was a very refreshing change. Jacqui’s advice was fast, thorough and extremely helpful. She also picked up on some other areas of concern, and my only regret was that I didn’t speak to Jacqui sooner. I can confidently recommend Jacqui’s services to the community!

    #1164628
    JacquiPryor
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    Thanks so much for the lovely feedback Anne-Marie :)

    Glad I could help (and, apologies I hadn’t had the chance to review/comment on your forum post before we spoke directly!)

    #1164629
    alliedib
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    AM_FrenchsForest, post: 190453 wrote:
    So while I can’t use the trademarked product name, what I would like to know is if I can reference it in anyway. Eg, ‘Our new product is similar to “Trademarked name goes here”‘.

    Hi Anne-Marie,

    Good to see that Jacqui was able to help you out.

    If you don’t mind, can I ask what the end result was? It would be handy to know in case others are in the same situation as you….

    Regards,

    Mark

    #1164630
    JacquiPryor
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    Hi Mark,

    I’ll leave Anne-Marie to decide if she wants to share the full details of her experience & outcome etc… (not my story to tell!)

    But, I can offer some general information on a couple of points from the original post that could help others in similar situations.

    If you are importing branded products from overseas, check whether the overseas supplier has registered that brand in Australia. Trademark registration is country-by-country, so, a brand that might be safe in their home country might not be safe in Australia.

    If the name has become generic/descriptive, sometimes it is possible to seek to cancel or revoke the trademark on that basis but this can be a costly, time consuming and stressful exercise. A lot of brand owners will do all they can to ensure their names are not viewed as the generic term for a product for this reason.

    In cases where the name is widely used by other companies, as Anne-Marie advised was the situation in her case, it is worth investigating whether the Australian trademark holder is in fact the ‘rightful owner’ of the brand. If an Australian entity is perhaps distributing on behalf of an international supplier, they may not actually be the rightful owner of the trademark in Australia. In some cases, the trademark could be opposed (if not yet fully registered) or perhaps cancelled if the named owner was not the rightful owner.

    In terms of using phrases such as “Our new product is similar to …”
    This can be a little tricky to answer clearly, and each case should seek it’s own advice based on the full circumstances. To begin with you may read the ACCC’s guide about advertising and selling in Australia; what you can/cannot do (see: http://www.accc.gov.au/accc-book/printer-friendly/29527)

    At the very least to suggest your product is similar to another product, you would likely need to be more specific in listing those similarities and ensure the use of such terminology is entirely accurate and transparent to consumers.

    Depending on the context, this could fall into comparative advertising, which is legal. You may use another person’s trademark for this purpose but it is a tricky business. Generally it would apply when you are comparing your product to another in a manner that advises consumers that yours is the superior product. The biggest trap is making statements in that advertising that are false or misleading, which is prohibited. If the guide does not answer your own comparative advertising questions clearly – seek advice before doing it!

    Whilst comparing your product to one that is under a registered trademark is not likely to constitute infringing that trademark, other areas need to be considered. For example, is the manner of the promotion or context likely to suggest to consumers that your product is somehow affiliated with the other product? Or, you’ve got approval or endorsement from the brand owner? If so, then this may constitute passing off, which is actionable.

    Ultimately, a trademark owner is probably not going to like that you are using the brand in any manner, so, they’ll examine the manner of use quite closely and where possible likely issue a letter of demand and/or action accordingly so you really do need to ensure whatever you are doing is entirely ‘correct’, and even still be prepared for the brand owner likely issuing you some sort of correspondence to see if they can get you to stop (whether rightfully or not).

    Every case really is quite different – so, anyone in similar situations should speak to a professional and please, please, please only see the above as ‘for information purposes’ only!

    Hope this is at least some food for thought :)

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