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  • #995784
    d3mad
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    I apologise in advance for vagueness, but I don’t want this post coming up in google search results.

    When starting my business, I had a few little marketing ideas in the back of my mind and in preparing for them I did extensive searches on ASIC and even IPAustralia and did not find anything even remotely similar to what I wanted to register. I had several names in mind and searched for all of them. The name we ended up going with did have ONE vaguely similar result, but we considered it so vague, that it isn’t worth worrying about.

    One name is a very generalised name: {locality} and {product} (without the “and”). For example “cabramatta mobile”. We considered it so general that we went for the name we chose.

    However, I wanted to keep my options open for two other names and registered the domains for these names back in July 2016. Nothing more.

    When I turned my router on for the business on a given date several months later, I’d forgotten that I’d set up this generalised name as the SSID but didn’t think anything of it.

    Two days after turning on the router and broadcasting my intended business name, a close competitor has gone and registered that name with ASIC. This is back in September. I have only just found out because the google search results now have his business name removed from google maps and he’s had it replaced with my very generic term. A term that people have been using to connect to my WiFi and would see as being me. It is not a name he has used himself ever but now comes up with his phone number when it pops up as a search result in google.

    I realise I’m late to the party and SHOULD have registered it myself back when I thought of it, but find it incredibly coincidental that a business of 15+ years that has traded under a single name variant for that time all of a sudden registers my SSID and domain URL as a business name two days after me opening my doors.

    TBH, I don’t know what I want to do about it, I know a big expensive legal battle is not the answer and I do feel cheated that I’ve missed out on a perfectly awesome marketing strategy (that in the end I thought was a little “cheap” and “too generic” to get away with) that he is now employing and possibly taking my customers (of which he would argue that me starting my business is taking his customers—I get that).

    Given I had registered the domain names in the .com and .com.au TLDs and set it as my SSID and the fact he’s registered this two days after I turned on my router, do I have any recourse? He has since created facebook and google plus pages for the terms now and is popping up everywhere that I had planned to.

    I know the error is mine, I should not have set the SSID to my magic phrase, and I should have registered the business name myself, as well as the facebook and google plus pages, and I’m probably just too late.

    As far as I can tell he hasn’t lodged any IP protection (and nor did I), and doing that now is probably too late as he’s now employed it as a strategy and would argue prior use to any application I could make.

    Any comments?

    #1203886
    JacquiPryor
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    Hi Dave,

    I feel some more specific info might be needed to really answer your queries here – feel free to send me a P.M or email ([email protected]) with details – particularly the name.

    From an IP (trademark) perspective, names that are generic and are effectively suburb + product/service description are more difficult to register and also to enforce. If the name, using your example, was Cabramatta Mobile for mobile phone services the trademarks office would question whether the name is actually a trademark (i.e. a ‘sign’ that is capable of distinguishing those mobile phone services from other providers in Cabramatta). Those sorts of ‘descriptive’ trademarks require the applicant to prove that the name does distinguish the services from others (or in some cases it will become so capable).

    If the name is a bit indicative but still considered registrable, again from a trademark perspective, you might be able to register it but if the competitor can demonstrate use of the term as a trademark in the course of trade for the similar goods/services before you first used/registered (whichever is earlier) then they could have a defence to any trademark infringement claims you might make in the future once registered.

    That said, if the name is one capable of TM registration then if you were to register you are granted the right to use that name for the goods/services you’ve nominated (meaning the competitor might struggle to prevent you using that term).

    Other areas of law can work in combination with IP/TM laws – for example, is the competitor somehow engaging in conduct that would mislead or deceive consumers into believing they’re associated with you somehow when they’re not?

    Descriptive TMS, even if registered can be more difficult to enforce. It would be a defence to an infringement claim if the alleged infringer was simply using common terms to describe products/services or characteristics of those products/services.

    As you can see, it can be a complex area. I understand you don’t wish to put all the details in a public forum post so if you would like to contact me privately with some further, more specific detail, am happy to offer some further comments to consider.

    ^^ for information purposes only and is not to be taken as legal advice.

    #1203887
    JacquiPryor
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    Oh, a PS for you – from a trading name perspective with ASIC, they will usually allow similar business names on the register so long as they contain enough differences to identify the operators of businesses. E.g. You could register the same phrase/name but add “Australia” or “Services” etc to the end.

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