Eastern Commercial Lawyers

Intellectual property - Are you legally entitled to maintain the usage of your business name?

20-May-2011
It is important that businesses take all necessary steps to protect their intellectual property to avoid the loss or damage to their branding and intellectual property.

This issue often arises in circumstances where businesses in related industries make claims with respect to ownership of similar or same business trading names.

It is a common misapprehension that a business is simply protected by registering a business name. It is important in most instances, for the business to take the extra step of registering their business name and/or logo as a trademark.

We highlight that during any trademark registration process, any party may, pursuant to the Trademark Act 1995 lodge an opposition to the registration on grounds amongst other things, that the registration of a particular trademark is likely to deceive or cause confusion to the general public because of connotations that a particular name is associated with a competing business. A successful objection by a party would result in the trademark application not being accepted.

There is also a risk of using a name which gives rise to a cause of action under the Competition and Consumer Act (the former Trade Practises Act). Such a cause of action would arise if a party claimed that it had built up a reputation in a particular name or logo that meant that another party's use of that name or logo would amount to misleading and deceptive conduct.

A party should consider making a trademark application in the absence of any trademark being in place with IP Australia. Thorough searches should be carried out of related names prior to lodging the trademark application.

Failure to do so, could result in the inadvertent creation of a dispute concerning ownership of a name resulting in a worse case scenario, potential injunctive proceedings filed in the Supreme Court seeking orders that a business not use a particular name. Further, an objection may be lodged before IP Australia which could lead to separate trademark proceedings to determine which party is entitled to ownership of the name.

In order to avoid such claims, and the risk of damages and costly legal proceedings, on option is to simply change names of the proposed business or business. In saying that, there are a number of facts to consider including the amount of resources already spent on marketing and branding with a particular business name and prospects of successfully lodging a trademark application with IP Australia. To the extent that a party is able to produce evidence to differentiate names, then the trademark application will obviously have a greater chance of success.

Once a trademark has been successfully accepted by IP Australia, the owner has unfettered legal rights to the name and logo for 10 years which cannot be legally challenged subject to provisos that the name is actually used in trade and commerce and ultimately renewed upon expiry of the period. Ownership if the trademark would give you the right to enforce your ownership as against other users.

If you require any assistance in making an application for a trademark, enforcing a trademark or even defending an alleged breach of trademark, please do not hesitate contacting John Murray, Partner of our firm on 0414 294 260 or on John.murray@eclawyers.com.au

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