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Help! Someone Has Used My Business Name – What Can I Do?

At MMW Trademark Services, we regularly get SOS calls from concerned business owners who have discovered that their business name is being used by another entity.

If this has happened to you, the following article from our highly experienced trade marks attorney, Jacqui Pryor, is a must-read. It could save you a lot of angst, time, effort and money.

What to do when you discover that someone else is using your business name

As counterintuitive as it may seem, the first thing you should do if you’ve discovered that someone else is using the same or similar business name in your market is … nothing.  But we don’t mean that you should turn a blind eye to it. 

Just don’t rush out and contact them.

Our recommendation is that you tread carefully and first enlist the advice and help of a trade marks expert.  This will ensure a well-considered approach and that all the appropriate investigations are done and that the right actions taken should infringement have occurred. 

In this article, Jacqui discusses the processes involved when two business are using the same, or very similar name and gives practical advice on what you should do if you suspect that your name is being used without your permission.

Let’s first look at what a business name actually means.

What is a business name and why is it important to protect it?

Your business name is one of the key things that distinguishes you from your competitors.  It’s vital to your brand and it’s inextricably linked to your commercial success.   If another entity who is operating in the same field and targeting the same markets as you are is using the same or very similar business name, it can lead to customer confusion and brand erosion.

However, before any infringement can be deemed to have occurred, there are important factors to consider.

The first is that businesses with the same names but which are trading in different markets are not likely to be seen as infringing on one another.

It’s also important to understand that there are important differences between a registered business name and a registered trade mark – and this can have a significant impact on your ability to defend your brand. 

A business name is your trading name and it enables customers, suppliers and other business to identify you.  A registered trade mark distinguishes your goods and services  from other products and services and gives you exclusive and enforceable legal rights to the use of that mark.

Registering your business name through the ASIC website is a necessary step for any business, but the safety net of legal protection (both as a sword and a shield) against another person or entity using the same or similar business name in your area of operation typically requires registration of that name as a trade mark.  This is done through IP Australia. In short, registration of a business name does not immediately convey rights to use that name, nor the right to prevent others from using the same or similar names.

Registering your business name as a trade mark provides you with exclusive use of the name in relation to your nominated goods and services throughout Australia for an initial period of 10 years.

Have a read through this article on the differences between registering a business name and registering a business name as a trade mark if you’d like further clarity on the two.

Steps to take if another party is using the same business name as you

Australia operates on the ‘first to use’ principle as opposed to the ‘first to file’, but usage doesn’t always trump trade mark registration when it comes to making an allegation of infringement against another business.  Here’s another interesting article to read which provides more information on the important things to know between first to file countries and those that are first to use

It’s not as easy as enforcing registered trade marks, but, it is possible to enforce unregistered trade marks, but the costs and consequences can be significant.  That’s why it is always best to apply to protect your business name by registering it as a trade mark as soon as possible. 

Step 1:  Establish who used the name first

Should you discover that someone else is using the same or very similar business name as you, the first step is to try and establish who was the first to use the name.  If the issue involves the same or similar business names as opposed to infringement of a registered trade mark, it can be a case of ‘passing off’ or ‘misleading and deceptive conduct’.

Both of these generally require the person with the claim to ‘unregistered’ rights has some reputation in the business name such that the use by a competitor may be seen as imitating or misrepresenting the first business and  that has resulted in a negative impact on a business.  These sorts of rights are difficult to prove and enforce. Relying on a registered trade mark does not require the owner to establish any reputation or recognition in that brand in order to allege the unauthorised use by a third party infringes the registered trade mark.  It can be distressing and frustrating, but it is important to establish whether your intellectual property rights are actually being infringed and to take the right action.

However, these types of situations can be complex, lines can be blurred and the way forward is not always clear cut.  That’s why we recommend getting professional advice so as to avoid false allegations and the possibility of counter-claims (a key reason why you shouldn’t rush out and accuse another party without knowing all the facts first).  We also always advise trying to resolve disputes as cost-effectively as possible outside of the courts.

Step 2:  Contact the other party

Our primary aim at MMW Trademark Services is to resolve the situation equitably and negotiate a favourable outcome without litigation. 

Our trade marks attorneys would review your situation and should we determine that you either have a stronger claim to the business name or that your trade mark rights have been infringed, we would recommend making contact with the other party to address the problem and negotiate a workable solution. Depending on circumstances, you might choose to approach the other party directly. Or, our trade marks attorneys can issue the transgressor with a formal ‘cease and desist’ letter to compel the party to stop using the same business name as you. 

This letter would include details of your trade mark (registration number, pending application etc) as and/or details of your common law rights through use of the name, details of the specific laws that they have infringed, examples of how and where infringements have occurred and a demand that they stop using the name.

In this situation, it may be necessary for you accumulate evidence of your ‘right’ to the business name such as examples of media mentions and proof of when you started using the name (eg launch of websites, marketing campaigns etc).

Enforce your rights

If a formal cease and desist letter does not result in the resolution of an infringement it may be necessary, at times, to engage the services of a litigation firm to provide further advice and assistance around the filing of formal proceedings in the Federal Court of Australia. The approach taken by Mark My Words Trademark Services is a commercial one. We always strive to resolve these matters between the parties and before formal legal proceedings are required. However, unfortunately, there are times where the rights owner may need to consider litigation to enforce their rights.

 

A final word about business names

We understand how distressing it is to discover that a competitor is using the same business name as yours.  The good news is that there are often ways to contest this.

If you do suspect that your rights are being infringed and that someone else is gaining an unfair advantage by using the same business name as yours, we urge you not to take matters into your own hand but to seek professional advice immediately.

As outlined earlier, the strongest protection for your business name is through trade mark registration.  It is far easier and simpler (and more cost-effective) to enforce a registered trade mark than it is to try and prove that a competitor is guilty of ‘passing off’ or ‘misleading and deceptive conduct’ in relation to the use of the same or very similar business name as yours.

Our advice to anyone starting a new business is to first establish whether your intended business name is available (which includes conducting trade mark searches) before you invest any resources in developing your brand.  Many entrepreneurs have learnt the value of trade mark registration the hard way – and doing your homework upfront and getting expert advice in the early stages of setting up your business can save you valuable time and money.

Join the many entrepreneurs and business owners who have reached out to MMW Trademark Services for friendly expert advice and support.  We invite you to contact us on 03 8288 1432 or get in touch through our website to get watertight legal protections for your valuable intellectual property.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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