New business owners may remember to register their name with the Australian Business Register and set up their company through ASIC. But it’s easy to overlook confirming whether someone else has a registered trade mark over your proposed business name. So what do you do when you are one month away from launching your business?

You’ll need to investigate whether the registered trade mark is a legitimate threat and to confirm whether your use of the name constitutes infringement. Below, we set out what questions you should ask to help understand your position and options.

How Similar is the Registered Trade Mark?

Business names that are identical or deceptively similar to a registered trade mark are likely to infringe. It is easy to think that adding or removing a word from the business name can make it very different but that is not always the case. You should consider whether consumers will likely be misled or deceived by the two names.

What are the Classes?

Trade marks are registered under 45 different classes, which indicate the goods or services associated with the mark. The registered trade mark gives the owner exclusive rights regarding those goods or services.

If the classes cover the same goods or services that your new business is providing, you are at risk of infringement. This is because the trade marks are used to indicate to consumers the origin of the goods or services. If your business offers the same goods or services using the same brand name, you could confuse consumers who wouldn’t know what business they were purchasing from.

Is it a ‘Registered’ Trade Mark?

In Australia, trade mark registration lasts for ten years, and which point, the owner is required to pay a renewal fee to extend the registration for a further ten years. There is no limit to how many times a trade mark owner can renew their mark.

You can also check the trade mark’s status on the Trade Marks Register. If the trade mark has expired, there is typically a grace period after which the mark may be removed from the register.

Are They Still Using the Mark?

A business may no longer be using their registered trade mark. If this is the case, you can apply for IP Australia to remove this mark from the register. The Trade Marks Act 1995 (Cth) (the Act) includes a provision for people to do so where the trade mark owner has not used their mark for three years. If you are successful in your non-use application, the trade mark will be removed, and you can then use the mark without fear of infringement. Not only that, but you also have the option of registering the trade mark for your own business.

Do They Use the Mark all Over Australia?

If you notice that a business has registered a trade mark, but they are only trading in one city, you can apply for a geographic restriction to be placed on the trade mark. This would allow you to use the name in all other locations. For example, grocery store Franklins sold a product which was advertised Australia-wide but only sold in Western Australia. Another company with a similar product and brand name successfully applied to restrict the trade mark’s territory to Western Australia.

Is the Trade Mark Used In Relation To the Classes Claimed?

A trade mark may be registered, but not necessarily used, in multiple classes. If the trade mark is not used for the goods or services that conflict with your business, you may be able to apply for partial removal of classes from that trade mark.

Key Takeaways

In most cases, it is sensible to stay away from business names that are identical or similar to registered trade marks. If you haven’t started trading yet, you’ll need to weigh up the cost of taking on a business that has made the effort of registering their trade mark. Further, businesses must consider the costs involved in defending any trade mark infringement claim that the trade mark owner may make against you.

If you have any questions about your position and your prospects for success in a non-use application for the registered trade mark, get in touch with our trade mark lawyers on 1300 544 755.

Dhanu Eliezer
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