Anybody here an IP expert ? (not property related)

[Ace in the Hole]

Intellectual property, trademarks specifically.

I've noticed many businesses in my industry have not registered their names as trademarks.
Most only have a domain name and likely registered as a business name.

To my knowledge, owning the trademark in the respective class gives the highest power over lesser registrations.

Would it be a low act to register existing business names to use for advertising purposes, even if not trying to force the existing businesses to stop using the name?
Can the existing businesses fight this based on their history of use?
From what I've read, if you're first to trademark the name, you have the power.

I really think that small/medium sized businesses overlook this vital task when starting up.

 

[The Falcon]

You are going to really struggle to register a trademark for the name of an existing business that you are not the operator of. I handled our trademark registration and my impression is that IP Australia cast a pretty wide net, and you need to show a genuine use.

 

[willair]

It would depend on the name if it triggered various copyright worldwide alerts, I was onto this 20 years ago,i started with the same idea the company name was vacant in Australia but had a worldwide copyright from my understanding back then through front bar legal advice the worldwide copyright covered this country but it may have changed..how I found this out was my wife was into mlm in face creams ,the us based company did not have a company name rego in Australia..

 

[Terry_w]

First users would generally have priority over later registers.

 

[Tony3008]

Perhaps the most notable case in Australia is Hungry Jacks:

When Burger King moved to expand its operations into Australia, it found that its business name was already trademarked by a takeaway food shop in Adelaide.

https://en.wikipedia.org/wiki/Hungry_Jack%27s#History_of_.22Burger_King.22_in_Australia

 

[beachgurl]

Having a trade mark registration makes it easier to enforce your rights against a third party using the same or similar mark for the same or similar goods or services, but it does not entitle you to any rights over the first user. Common law rights exist in Australia so, generally, evidence of the first use in Australia deems the ownership of the trade mark. It is not compulsory to have a trade mark registered to rightfully use it.

Trade mark examiners will conduct searches of ASIC, domain names and general internet searches to determine use of the trade mark in Australia. So if a person is intentionally filing an application based on an identical trade mark already in use, the Trade Marks Office will raise an objection to your application and state that unless you show evidence of use, the trade mark cannot be registered.

If for some reason the examiner doesn't find any use by third parties in their searches, or believes that there are sufficient differences in the goods/services to be registered in comparison with the current use of that trade mark by a third party, there are opportunities for a third party to object. There is a period of time after acceptance of the trade mark to object, so the trade mark doesn't proceed to registration, or if it does become registered, they can object (although it is more expensive and time consuming to state your case once the trade mark is registered). Their evidence would include evidence of use and/or reputation.

Australia is a first to use country but there are many countries around the world that are first to file. So if you intended to do that in those other countries, you would have more rights than the 'genuine' owner. There are many businesses in Asia that exist and make money purely from this.

Willair there's no such thing as a worldwide trade mark. It is still possible for a person to apply and successfully register a trade mark in Australia if it is being used and/or registered somewhere overseas. This is becoming harder now with the internet, as it is much easier to see use anywhere in the world. It would be expected that an examiner would see that use in their searches and if there is any presence or sales in Australia at all, that owner has the right to stop someone from registering their mark here.

 

[willair]

Willair there's no such thing as a worldwide trade mark. It is still possible for a person to apply and successfully register a trade mark in Australia if it is being used and/or registered somewhere overseas. This is becoming harder now with the internet, as it is much easier to see use anywhere in the world. It would be expected that an examiner would see that use in their searches and if there is any presence or sales in Australia at all, that owner has the right to stop someone from registering their mark here.

That's 22 years ago,and it's just one of the businesses my Wife went into,the US based company went bust about 5 months after my wife started selling and we were left with about half a ton of face cream,,which was very hard to sell price wise,but with trademarks one would think companies like Coke and various other brand names have worldwide registered trade marks for their brand,something I will have to read up on..

 

[beachgurl]

Willair if you require any specifics on anything or direction on where to research let me know. I've been in the TM game for over 10 years.