Could your competitor’s business name be too close to your trademark and/or your preferred brand?
New businesses often spend a lot of time developing their branding before looking into business and trademark registration. And some of these new businesses will eventually discover that their preferred trademarks are very similar to other people’s registered business names. Sound familiar? Have you perhaps waited too long to do your own due diligence?
What If Their Business Name Is Close To Your Trademark?
Happily, even though someone has registered a similar business name, you may still be able to register and use your preferred trademark(s).
Here’s the way forward.
How The Trademark Process Works
You or your trade mark attorney will prepare and file the legal documents for a trademark application.
The Australian Trade Marks Office then determines whether (under the Trade Marks Act 1995) your proposed name can be registered as a trademark in Australia. As part of this, they will check the official register of trade marks for any potential conflicts.
However, as part of that search they don’t check registered business names, trading names or domain names.
So if no other business owner has applied for or been granted a registered trademark that’s too similar to your brand, then it is still quite possible that you will succeed with your own trademark application. However, it may not end there. . . .
So, What’s The Catch?
If it turns out someone else has already been using your preferred brand name / trade mark for a business that’s similar to your own — even if they haven’t registered a trademark — they may still have rights under law to the name. If so, it would then be possible for them to block your own trademark application during the two-month ‘opposition period’. In some cases they might even be able to challenge you after your trade mark was granted.
You don’t want to find yourself in this situation. That’s why you should get help from your trade mark attorney in advance. A trade mark attorney will help you avoid this sort of Catch-22 problem from the start, by working with you during the application process.
And your attorney can help you head off serious problems in other ways, too. Here’s an important example.
What If Someone Else Starts Using My Brand?
It does happen. It isn’t always sinister. Please don’t contact the other business owner directly. This is a job for your trade mark attorney, who’s been trained in the correct legal approaches to these matters.
Your trade mark attorney will start by checking whether the other party is truly infringing your trade mark, or perhaps engaged in misleading or deceptive conduct. Knowledge of legislation and case law is critical here. After all, not every use of a similar word or brand name is contrary to the law, even if it may strike you that way on first impression. And this is only one of the issues your attorney will be checking before providing you with suitable advice.
There is one thing that will worry your trade mark attorney.
Wait – You Haven’t Already Registered Your Trademark In Australia?
Registering your trade mark gives you special rights under the Trade Marks Act 1995. If you haven’t done that, you may discover (too late!) that you don’t have full rights to stop others from using business or brand names similar to your own. This can cause you real problems later, especially once your brand becomes successful, well-known and worth copying.
What If Is Their Trademark Is Too Close To Your Business Name?
There are only so many really catchy names for new businesses and products. And, let’s be frank, not all of our clients get around to registering their trademark before they launch their business. So sometimes we find ourselves on the defence, trying to stop a trademark so we can protect a client’s investment in a brand and the customer base they’ve built up over years.
The good news is that you may be able to prevent the other business’s trade mark application from proceeding.
With luck, you’ll have discovered the application before it’s been granted. Sometimes we can help simply by contacting the competition and coming to an understanding. Or, as mentioned above, there’s a two month opposition period in which you and your trade mark attorney can present your arguments.
If you miss the two-month opposition window, you may still have some options. For example, if you can prove that you were using the business name before the other party, you may have the right to continue using the name. You might even commence action in court to seek a cancellation.
However, that’s doing things the hard way. It’s best to establish your trademark rights early, which in most cases will help you avoid this unfortunate situation.
Trademark Rights The Easy And Budget-Friendly Way
The easy, budget-friendly way is to talk to your trade mark attorney early in your business planning. For example, if you’re working with a graphic designer for a logo, you should also be talking to your trade mark attorney at the same time. Sometimes that leads to tweaking your brand, finding a suitable alternative, or exploring other legal approaches. In other cases, we’ll advise that you’re free to proceed with confidence. In either case, it’s easier on the wallet and the heart if you get this right in the beginning, rather than scrambling to patch it up afterwards.
Naturally, we’re more than happy to help. Prevention is better than cure, and one of our most important jobs is to small businesses like yours get the trademark protection they deserve. Why wait? Contact us today. We’ll talk you through the process and answer your questions – no obligation.