Trademarks vs Business Names - Do we really need Trademarks?
It is often thought that having a business name is enough to protect a trading name. Sadly, this is not the case and registering a business name gives you no rights at all, other than the right to run a business using that name. To protect your business name and logos, you then need to register a trademark.
How do you register a trademark?
To save yourself time and hassle, it is important to conduct a search of the trademarks that are already registered. The search is free from http://www.ipaustralia.com.au/. Please note however that searches may be quite complicated depending on the name being searched. If search uncovers a trademark that is already registered for your logo in your particular classification, it is difficult to proceed. You will need to speak with a lawyer and get the appropriate advice.
The search facility is complex and it is important that you properly search all variations of the mark, including different spellings, different languages etc. If you are not sure, please seek legal advice, as there are costs involved if you need to amend your application.
If a trademark is not already registered, you can at least proceed to the next phase. A trademark can be registered in as many classifications as you wish, for the appropriate cost, as long as one (or one very similar) is not already registered in that classification.
It takes approximately 7 months for a trademark application to go through the required advertising period and, if no objections have been received, for registration to occur. However, once an application is lodged, you have rights against anyone using your trademark or something similar.
What if I don't have a trademark but someone else is using my name?
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If you haven't registered a trademark, and someone uses your trading name or logos, is it too late? Well first of all, it is never too late to register a trademark, provided someone else has not already registered one in the same or similar class to yours. Further, if someone is using your trading names or logos, you may have rights without having registering a trademark. Why? As you have been trading for 20 years you would probably have built up a reputation in the community, and customers would know your business from its name and possibly only its logo. Therefore, if someone else was to use your trading name or logo they may be considered to be illegally passing off your business. |
So why do you need a trademark? Can't you just rely on passing off?
The law of passing off is complex and you need to prove to a court that you have established a reputation and goodwill. The costs associated with this may be enormous. On the other hand, if you have a registered trademark, you can write to the person you believe is breaching your trademark and request they cease doing so. If they do not, it is easier to then assert your rights, as you do not have to prove reputation.
To find out the best way to proceed, it is best to seek specialist advice from a lawyer who practices in this area.
Contact Russell Morley at rmorley@talbotolivier.com.au for more information.
