A business name is a valuable asset and key to your brand. If another business is using your business name in the same market, customers may be misled about the true identity of the business they are dealing with. If you find someone else using your business name, it is important to take action quickly as this may compromise your brand’s reputation and your sales.
Enforce Your Trade Mark Rights
Registering your business name as a trade mark provides you with exclusive rights to use that name for the categories of goods or services listed in your application. For example, if you register the word ‘MANGO’ for downloadable software, you would likely be able to prevent others from using the same word to represent their software goods or services. However, this protection would generally not extend to unrelated goods and services not covered by your application, such as cosmetics, as an example.
If someone else is using the same business name, you should try to establish which party started using the name first. In Australia, the true owner of a trade mark is the person that can establish that they used the trade mark first, in relation to their goods and services. As such, if your competitor started using the name before you, they may have a stronger position to prevent you from using that business name moving forward.
Taking Action
If you believe you have been using the name longer than the other party, you may consider contacting the other business and negotiating a favourable outcome. If this approach is unsuccessful, you can enforce your rights by sending a cease and desist letter. This letter would include:
- details of your trade mark (e.g. trade mark number if you have a registered or pending application);
- details of what legislation they have infringed (e.g. Trade Marks Act 1995 (Cth));
- examples of their infringing conduct; and
- a request to stop the infringement within a specified amount of time.
The unauthorised use of your business name may also entitle you to compensation for damages caused. If the infringing business refuses to cooperate, you can choose to initiate court proceedings. However, it is always recommended to try and resolve disputes outside of the courts where possible, given the costs associated with formal proceedings.
Bring an Action to Protect Your Reputation
If your business name is not a registered trade mark, there are two types of protection available.
Passing Off
A business can make a claim against another business for passing off. This action protects a business whose reputation or ‘goodwill’ suffers damage or misrepresentation by an imitator, and as a result, misleads consumers.
You can help establish your business name’s reputation by providing evidence of the following:
- surveys,
- sales figures,
- advertising budgets,
- publicity releases,
- media mentions, and
- interviews.
If you believe you have a stronger claim to the business name, you can send a cease and desist letter to the infringing party to demand that they stop using the name.
Misleading and Deceptive Conduct
You may also have a claim under section 18 of the Australian Consumer Law. This section prohibits misleading or deceptive commercial conduct. For instance, a court found that a business was engaging in misleading and deceptive conduct by naming a perfume “Nike Sport Fragrance”, and displaying it in shops next to sports fragrances. The business’ conduct gave the false impression that the fragrance was distributed by, or associated with, Nike. A business may still fall foul of section 18 regardless of whether it intended to mislead consumers.
Unlike passing off and misleading and deceptive conduct, trade mark infringement does not require a business to show reputational damage or proof that the name misled consumers. A business will infringe on another business’ name when the two names are deceptively similar.
Continue reading this article below the formLodge a Domain Name Complaint
Sometimes a third party may have registered a domain name that is similar to your business name. If you can show that you have stronger rights to the name, you can lodge a complaint with one of two dispute resolution providers to have that domain name transferred:
- Resolution Institute, for Australian-level domains (i.e. “ .au”); or
- World Intellectual Property Organisation, for top-level domains
(e.g. “ .com” or “ .net”).
This will involve an evaluation of the third party’s connection to the name compared to your own and is determined on a case-by-case basis. Registering your business name as a trade mark or providing evidence of an established reputation in a name can help establish your rights to the name. For example, Apple was successfully able to transfer the domain name “ipods.com” to their business nine years after a third party had registered that domain name.
Lodge a Complaint on Social Media Sites
If another business is using your business name on certain social media sites, you may need to contact the site directly to remove the account. Check the platform’s policies and procedures to identify if and how you can make a complaint. Approaches will vary from site to site. For example, Facebook, YouTube, and Twitter prohibit any impersonations or ‘name squatting’, but Twitter does allow accounts that are parody impersonations.
Key Takeaways
It can be distressing to discover that another business is operating with the same business name. But if you have registered your business name as a trade mark, you can contact the infringer directly and enforce your rights. Registering a trade mark also puts you on stronger footing if you request a domain name transfer or for a social media platform to suspend another business’ account.
If you haven’t registered your business name as a trade mark, you can still bring an action in passing off or misleading and deceptive conduct to stop third-party use of the name, and protect your reputation; however, it is easier to enforce a registered trade mark.
If you need help with your IP right, our experienced IP lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A registered trade mark for your business name will provide you with exclusive rights to use that name in relation to your applied-for goods and services. If a competitor tries to use the same name, you may be able to enforce your rights against that business to protect your brand.
We would recommend applying to protect your trade marks as soon as possible. That way, if another business is infringing on your trade marks, you could enforce your registered rights against that business. Although it is possible to enforce unregistered trade marks, it can be significantly more complex and costly in comparison to enforcing registered trade marks.
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