Whether you’re an established business owner or just starting out, it’s important to protect your brand and intellectual property from any possible infringements. Areas of intellectual property such as trademarks are often complex and confusing to many traders but your brand and the reputation attached to it are some of your business’s best assets, so it’s worth knowing everything you can about what it takes to protect them.
Trademark registration gives you the ability to exclusively protect your business name/logo or similar through using your trademark for an indefinite period of time. When deciding upon your trademark name, you may become aware of other business names very similar to yours which may give you cause for concern about moving forward. Before losing hope it’s a good idea to contact an expert in trademark law to get an idea on where you stand from a legal perspective.
At Quick Off The Mark, we can give you expert advice on how to proceed when faced with the complex issue of similar business names in the marketplace and the ability to register a trademark.
Call today to set up an appointment to discuss your concerns.
What Happens if Someone Has a Similar Business Name to Mine, Can I Still Register It?
Being a new business owner is an exciting time, with a lot of work and money going into developing your products or services. Now that you’ve decided to take the extra step and protect your assets, what happens if the name you wish to trademark is very similar to another registered business name?
In the case where an individual has registered a business name, this actually has no bearing on whether or not another person can go ahead with registering the same name as a trademark. Once you file your trademark application, IP Australia will conduct a database search of pending and registered trademarks. The search does not extend to business names, domain names or any other names – they will only consider the trademarks register. During this search, IP Australia are only looking at your choice of name from a trademark perspective and nothing else. If the person using the similar name as their business has not put in an application to register a trademark (and/or has not registered a trademark), the similar business name is highly unlikely to stop you from registering that particular trademark for your own business ventures.
However, once your trademark has been accepted for registration by IP Australia, it becomes vulnerable to opposition being filed against it. All accepted trademark applications in Australia go through a two-month window of opportunity for third parties to lodge an opposition to a trademark. This is from the time IP Australia advertises that the application has been approved. If another business owner learns of your application, they may feel they have grounds to lodge an opposition to your application.
If I Register the Trademark, Can I Stop Other Businesses from Using It?
If you become aware of another person using a similar business name after you have registered your trademark, it’s important that you don’t act on impulse by trying to sort the issue out yourself. Instead, we advise that it’s in your best interest to have your trademark professional to look into whether or not there is actually a basis for you to allege that the use is an infringement. For example, are they are selling products or services in the same category or class as your business? If you are trading in completely different industries, it is not likely that you will be able claim infringement by the other party using this business name. Also, if the other operator actually used the name before you first used or registered this could give them the position that the use is not an infringement.
At Quick Off The Mark we will be able to investigate on your behalf the likelihood of any confusion being caused in the marketplace, as well as ascertain which party was first to use the business name.
You may find yourself in the situation where you have registered a business name, and now wish to trademark your name – being unaware of another party using the same business name. A trademark professional can assist you with knowing what your rights are when it comes to stopping other businesses using a similar mark. If it’s determined that you registered your business name before the other party, you’ll be at a distinct advantage through being the earliest user of the name and (hopefully) the owner of the trademark. If you provide similar goods or services as the other person, you have a good chance of stopping them from using a similar mark.
As a very general position (noting each case is different) infringement occurs if someone uses (as a trademark) a confusingly similar sign to the one you have registered – confusingly similar in both name and product or service. There are defences available that state certain situations are not an infringement of a registered trademark, so always best to get solid advice. For instance, similar business names such as ABC Furniture Removal and ABC Early Learning Centre are two different names in two different industries. There is very little likelihood of consumers getting confused between the two businesses. It gets a little more complex however, when businesses use similar names in separate but related categories. Let’s say for example, ABC Furniture Removals (who are registered in regards to the furniture removal business), discover another business using the name ABC Furniture Solutions, wishing to brand goods used in the removal services process. In this instance there may be a case of conflict, as a moving box could be deemed related to the service a removal company provides.
Registering your business name which you then go onto register as the trademark, gives you the right to use that name in relation to the product or service nominated and potentially stop other people from using similar names which could lead to confusion in the marketplace.
What If Another Business with a Similar Name Trademarks it First?
In a situation where another similar named business registers their trademark before you, there are still options available to you. Firstly, if you get the opportunity to act (with the aid of your trademark professional) within the two-months after IP Australia advertises its approval, you can oppose the registration. If that deadline is missed however, that person will be granted the right to use that trademark. It’s worth remembering here, if you’ve been identified as using the business name before the other party, there is still a good chance that they won’t be able to stop you from continuing to use it.
It’s important to do your research so that you don’t choose a name (or one similar) already registered under the same or related category of the goods or services you provide. Your name should be as unique and identifiable to your business as possible. Being aware of a similar business in the marketplace as quickly as possible and seeking the aid of a trademark professional, will give you the best opportunity for protecting your business before the other party tries to gain the advantage.
To get ahead of the competition contact Quick Off The Mark today.
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.