When you start a new business venture, you are filled with energy, excitement, and dreams for the business. The investment and time and finances needed to get it on its feet takes commitment. So, it can be disheartening when you take the next step and look into protecting the assets to discover that the trademark you plan on registering is similar to one that already exists and is registered.

Breaking down the facts

The encouraging news is that when a business name is registered, it doesn’t automatically eliminate the chances of another venture attempting to register the same name as a trademark. Here’s how the process will work.

• You, as the business owner, fill out the trademark application.
• IP Australia will carry out an examination to determine whether your proposed name can be registered as a trademark in Australia. In considering similar names, they will only be looking at the trademarks database and not business names, company names or domain names.  

The key point here is that the search involves trademarks only. This means if another business owner has not lodged an application or been awarded a registered trademark, there is very little chance that your registration will be hindered in any way. However, it is necessary to note if another person has made earlier use of a substantially identical name for the same sort of product/service as yourself, they may have grounds to claim ownership. This could result in an attack on an application you might file. 

Once IP Australia has accepted your trademark application, there is a period in which you could find your application being opposed by another party.  The parties you are likely to hear from are those that feel your business name is too similar to their own. For a period of 2 months following the advertisement of the acceptance of your trademark, a third party has the right to lodge an opposition to your application. 

But what are you to do if you find yourself on the other side of this issue? What should you do if you discover that another venture is using a name that is similar to yours when you have already registered your mark? The most important point is to avoid contacting the business owner on your own. A trademark attorney has the specialized know-how and experience to help you navigate this issue.

First, the trademarks attorney will look into the details to establish if an infringement has occurred. There are a range of factors they will explore, one of them is to investigate if the other party is selling goods or services that are in any way similar to those that are part of your trademark registration. They will also look at the country of operation and whether any other defenses may apply. 

The bottom line here is that if the business with a similar name (or even the same name) is trading in an industry different from yours, it’s not likely that your infringement claim will be successful. Then there is timing to consider. If the trader can prove they were using the name of the business before you first used yours, your claim will also be unsuccessful. 

When is it deemed an infringement?

Trademark infringement happens when an individual uses a sign as a trademark that is substantially identical or deceptively similar to your registered mark and for the same or related goods and/or services. It’s not clear-cut in many cases, which is why you need professional advice to determine if the industries do indeed fall into a similar or related category or not or whether there are circumstances that find the party is not infringing. 

Of course, the main issue is whether or not you have registered your trademark. If you haven’t, you may not have any rights to stop others from using names that are similar to yours. Without registering your business name/sign as a trademark, you won’t have been provided any rights to the use of that name and won’t have the right to deem another party’s use of a similar name amounts to trademark infringement. 

It’s unlikely that another business will copy your name (or use one similar) and register a trademark before you, but these situations do occur. If you find yourself in this bind, and the application is still pending, you do have the option to oppose the registration. If you missed the two-month opposition window, you, unfortunately, won’t be able to fight the application. However, if you can prove that you were using the business name before the other party then as a ‘prior user’, you may have the right to continue using the name. You may even be able to obtain registration. Unfortunately, if another party has registered they are also provided the right to use that trademark for the goods/services nominated. Missing the opposition period would require the person to voluntarily cancel the mark, or you would have to seek cancelation through court proceedings. 

To avoid getting yourself into this situation in the first place, the best advice from trademark attorneys is to avoid choosing a name (or similar one) for a registered business in a related category in the first place. Do your research, and you’ll be able to launch your business without the worry. A trademark professional can walk you through the process from start to finish and help you launch your venture with your name rights protected. 

Author Bio: 

Jacqui Pryor is a registered trademark attorney based in Australia who provides trademark registration services, searches and other matters regarding trademarking. For more information be sure to visit Mark My Words Trademarks.