My family and I have been operating Ben’s Bakery for nearly a decade now. If someone registered this name as a trademark tomorrow, would I still have any rights?

This is an important question for new entrants into the trademark marketplace and has two related answers:

The legal perspective

Technically, since you were the first business to use “Ben’s Bakery”, your use of the name would take priority over someone who trademarked the name after your business. What stops them from being able to sue you is that if you were to register “Ben’s Bakery, you would be allowed to do so.

The rationale for this is that you were using it first, which gives you priority.

Having said this, if you have only been providing services in a limited area, your ability to use the name might be limited to that area. This might mean that you wont be entitled to market the bakery in a broader context than the limited area in which you operate, such as in a directory or on the Internet.

The commercial perspective

From a commercial perspective you might be left out of pocket in your attempts to assert any legal rights over the name that you believe you’re entitled to.

If you can imagine a giant franchise, such as Hire-a-Hubby, placing immense financial pressure on a smaller company trading under a similar name, it’s easy to understand why the weaker of the two parties may be forced to give in.

As always, the law throws a spanner in the works and complicates things further. Unfortunately for Ben, the straightforward name “Ben’s Bakery” might not meet the trademarking criteria set by IP Australia.

Since the words are only descriptive in nature and merely express what goods the business provides, the law also allows other business owners named Ben to use their own name to describe similar goods. If you were to apply to have this kind of descriptive name trademarked successfully, it would need to carry with it some sort of unique logo to avoid being rejected by the trademark office.

If you’re not already totally lost, in some cases, if you can show that you’ve been operating your bakery under this name for a decade, and that you’ve built a significant reputation and goodwill in the market, this may be adequate proof to ensure you’re eligibility for trademark protection of the name without having to attach any logo to your application.

Conclusion

The best practice is to register your business name as soon as you start operating it. Choose a name that is unique and not descriptive or generic. This will, first of all, make your business name more memorable, and two, ensure your trademark application is accepted. For more information on how to go about trademarking your business name, call LegalVision to speak with our trademark specialists.

Lachlan McKnight

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