Registering a Trademark Similar to Other Business Names

Irrespective of whether you’re a seasoned business owner or brand new, it’s vital you protect your intellectual property and brand from other parties infringing it.  The details of trademark law and other areas of intellectual property are often confusing to many traders.  Your brand and the goodwill you build around can be your business’s most valuable assets, so it is worth taking the time to educate yourself about how to protect them.

The aim of trademark registration is to give you protection of distinctive signs (such as business names, logos) that you use to distinguish your products/services from others in the marketplace. There is no lifetime to trademark registration like there is for some other forms of intellectual property, meaning you could effectively have this protection forever.

When making the decision as to what to name your business, or what distinctive brand to give a new product, you may discover other business names similar to yours.  Often people felt dejected over such findings, but before deciding to give up on your choice, it’s best to contact a qualified trademark professional to get the full picture of what your options are from a legal standpoint.

At Mark My Words, we offer expert advice on how to proceed when faced with the complicated nature of similar business names in the marketplace and the ability to register a trademark.

Contact us today to discuss your concerns.

Can I Register a Name if Someone Has a Similar One?

Beginning a new business venture can be an exhilarating time with a lot of time and effort – not to mention a financial commitment going into developing your goods and services. Once you take the step into protecting your assets, it can be frustrating to discover that the name you want to register as a trademark is very similar to another registered name.  So, what should you do?

The fact that someone has registered a business name does not affect the outcome of another person registering the same name as a trademark.  On filing your trademark application, IP Australia will then carry out a full database search of pending and registered trademarks.  This search is for trademarks only and does not include business names, domain names or any other names.  The search is only conducted from the trademark standpoint, so if an individual using the same name for their business hasn’t lodged or obtained a registered trademark, it’s unlikely they will hinder your ability to register the mark in question for your own commercial enterprise.

However, once IP Australia has accepted your trademark application it becomes at risk of an opposition being filed against it.  In Australia there is a two-month window of opportunity for any third party to lodge an opposition to all accepted trademark applications. This begins from the date IP Australia advertises the application’s approval. Any business owners in your market who view your name as being too similar to their own may believe they have grounds to lodge an opposition to your application.

Does Registering the Trademark Stop Other Businesses From Using it?

Should you discover that another person is using a similar business name after registering your mark, it is very important that you refrain from contacting the other party yourself. Rather than trying to sort it out on your own, we strongly advise that you have your trade marks attorney investigate as to whether any infringement has actually occurred. There are several key factors to determine whether infringement has occurred. One of the first things they will explore is whether or not the other party is selling goods or services that are the same or related to those covered by your trademark registration.

Businesses trading in completely different industries are unlikely to be infringing on each other, therefore it is not likely that you will be able claim infringement by the other party using this business name.  There is also the possibility the other trader was using the name before you first used or registered it which could give them the position that the use is not an infringement.  At Mark My Words we can properly review the situation and provide advice as to whether or not you have grounds to allege infringement of your registered trademark.

In basic terms, trademark infringement occurs if a person uses a sign as a trademark for the same or similar types of goods/services covered by your registered trademark, which is so similar to yours that it will cause confusion in the marketplace.  There are many situations where it may look like an infringement has occurred when in fact that is not the case, that’s why it is so important to seek professional advice. You can have similar business names in separate industries without causing confusion in the marketplace.  The lines can become blurred somewhat when businesses use similar names in separate but related categories.

Let’s say for example, Fast Furniture Removals (who are registered as a furniture removal business), discover another business using the name Fast Furniture Solutions, wishing to supply removal goods such as boxes and other removal supplies. Under these circumstances there may be confusion in the marketplace as a moving box could be seen as being related to the same service a removal company offers.

When you register your business name (or any other distinctive sign used by you) as a trademark, you gain 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. Without registering your trademarks you may not be able to prevent others from using confusingly similar names.

What Should I Do if Another Business Registers a Trademark for a Similar Name First?

Even if another business applies to register a trademark similar to yours first, you may have some options. Firstly, if the application is pending you will have a two-month window of opportunity after IP Australia advertises its approval, for you to oppose the registration.  If you missed that window however, you won’t get the chance to oppose it again.  Remember though, if you’ve been seen as using the business name before the other party, it is still possible they won’t be able to stop you from continuing to use it. If you are the prior user, or an honest concurrent user then you can still obtain registration despite the existence of a similar mark on the trademarks database. Providing evidence to support this can be tricky and you may consider the services of a trademark specialist to help.

However, your best option is to research your market so that you don’t choose a name (or one similar) that is already registered under the same or related category of the goods or services you intend to provide.  Ideally, you want your name to be as unique and identifiable to your business as possible. If you become aware of a similar business in your marketplace, seek the help of a trademark professional, to ensure you the best opportunity for protecting your business before the other party tries to gain the advantage over you.

Contact Mark My Words

Mark My Words are highly qualified and experienced in all areas of trademark law, infringements and disputes. We are able to manage the entire pre-litigation process from start to finish leaving you to get on with running your business.

To get ahead of the competition contact Mark My Words today.

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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