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Trade mark myth busting image

Trade mark myth busting

Jun 2, 2017   |   David Kelly

You register the business name Love Your Mutt for dog grooming services.  You then register it as a domain name, and set up a website spruiking your services as well as offering dog shampoos and grooming products for sale via the site.  You’ve heard that there’s a dog food manufacturer called Love Your Mutt.  But you registered the business and domain names with no problems, so you’re free to use the name, right?  Wrong.  You get a letter from Love Your Mutt’s lawyers, saying that they have a registered trade mark and you must ‘cease and desist’ using the name or they will sue you for trade mark infringement.  Yikes!

This happens more often than you think.  But why does it happen? 

Business, company and domain name registration won’t protect your brand

Just because a name is available, don’t assume you’re free to use it.

Before you start using a name/trade mark, it’s important to do clearance searches to ensure that it’s not already being used by someone else.  Neither business name registries nor ASIC will tell you it’s ok to use a name – they don’t provide conflict or name clearance searches, advise on registrability, and they do not provide you with any rights over the name.  All they do is provide the registration service.  The onus is on the person applying to ensure that their registration will not infringe anyone else’s rights.

Same story with domain names - the registries don’t do clearance searches.  When you register a domain name, you do so in accordance with the registry’s terms of use which (usually) state that the applicant is responsible to ensure they do not infringe others’ rights.  The terms will also say that the domain name can be cancelled by the registry if a third party proves that they are the legitimate owner of that name.

Registering business, company and domain names is a deceptively simple process.  Make sure you do your homework before you apply.

How do I protect my brand?  

The easiest way is to register your brand as a trade mark.  Registration gives you ownership of that mark for the goods/services for which it is registered, and is an effective barrier against others stepping on your toes. 

Before you file an application, it’s prudent to do clearance searches, to see whether your application will be blocked by an existing registration.  If the search report is clear, you’re on your way.

Benefits of trademark registration

Having a trade mark registration means that others can’t use your mark without your permission.  If your trade mark is used by someone else (for example, as a business name or domain name), you will have a very strong case for making them stop.  In some circumstances, you may also be able to seek compensation. 

If you don’t have a registration and find that someone else is using the same (or a similar) name, you still have options.  However, those options will invariably be significantly more expensive than waving your registration under their nose.

Our services

We provide a full service offering in relation to trade marks, from advice on registrability and clearance searches, through to filing applications and prosecuting them through to registration.  We can also assist with infringement matters, including trade mark oppositions.  And we can provide most of these services for competitive fixed fees.

Thanks to David Kelly from KHQ Lawyers for guest authoring this post.

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