The short answer is – you may not be able to. A registered trademark will always provide a stronger platform to stop people from using similar names where infringement is found to be occurring.
If you have not sought to register your business name or brand names as trademarks then there are few options available to make others stop using the same or similar names. So, my advice would be to first determine if the name is available as a trademark, and commence the registration process as soon as possible! The first step is to have a trademark search conducted (the registration process is a long one, so best to know up front whether your chosen name is likely to succeed in registration).
I suggest getting your trademark application underway before any contact with another party that may be using a similar name to yours. Otherwise, you may write to them and then they could file an application before you, making it that bit more difficult to achieve trademark registration. I also suggest you seek professional advice before making contact with any other party. It’s crucial that you act within your rights in these matters – action could be taken against you if you make unjustified threats of action against other people.
If/when your trademark is registered, you are entitled to take action against others who are found to be infringing your trademark rights. If you do already have a registered trademark, then you may wish to read our post about infringement, which is written to help determine whether your rights are in fact being infringed or not.
TIPS: You cannot make any claim that a person is “infringing your trademark” if you have not formally registered the trademark. If you have registered your trademark in Australia, but no other country then you cannot claim a person is infringing your rights if they are using the same name in another country.
If you have not formally registered your trademark, then other factors need to be looked at to determine whether there’s anything at all you can do to stop someone else using a similar name in relation to similar business activities to yours own:
- Who actually used it first? (Generally speaking ‘use’ in this sense relates to a commercial use or promotion, not merely registering a business name or domain name and then ‘sitting’ on it).
- Is their any relationship between you and the other party (or a prior relationship)?
- Can you prove they knew about your business name/brand name before they commenced use?
- Do you have a strong reputation in connection with your name or the products/services it brands?
Without trademark registration in place, as noted your options are limited. In some cases, you may have grounds to pursue action against someone else in Australia if their conduct is misleading and deceiving, or is likely to mislead and deceive, as this is a breach of the Competition and Consumer Act 2010 (formerly the Trade Practices Act). Or, if you have built a reputation and level of goodwill in association with your name/products/services, you may have grounds to pursue action against the other person for ‘passing off‘. This is a common law right that basically protects unregistered rights – the goodwill a person or business has built up in connection with their brands, products or services. Quite often, a person who has registered a trademark and needs to take action will also consider whether the other party’s conduct is misleading and deceiving, or is attempting to pass off of a reputation. So the three areas often go hand in hand.
Without trademark registration, you are essentially limited to the misleading & deceptive or passing off claims as detailed above. These can be particularly difficult to prove, and very costly to bring action against another party (more so than a trademark infringement case), as they rely on other, more complex factors than proving a trademark has been infringed. Obviously each case is different, but, it’s not unusual for a passing off case to cost in excess of $100,000.00 (with no guarantee of success, and no certainty as to how much of this expense will be awarded back to you if successful), where as a cut and dry trademark infringement matter can be resolved for under $10,000.00 (often far less).
There is a catch 22 in this area though, because a trademark takes so long to register (a minimum of 7.5 months in Australia) it’s not always appropriate to file an application, wait for registration and then make contact or instigate action against another party about their ‘infringing’ conduct. This could see them building their own reputation over those 7.5 months, and could be viewed as you failing to mitigate your losses or damages – ultimately affecting the outcome of any action if brought. So, often, advice will still be to write to the other party sooner rather than later (depending on the particular factors involved) and attempt resolving the issue as soon as possible. The ‘catch’ is that you cannot then rely on your trademark to claim infringement, and, depending again on the particular circumstances, that other person may event try to prevent your trademark from becoming fully registered by filing a Notice of Opposition at the appropriate time.
In summary, if you believe that someone else is using a name too similar to yours but do not have a registered trademark in place, please contact us so that we can provide assistance and help determine if/what can be done at this stage. If you would like to have a trademark search conducted, we do offer a free basic search as a first step. All forms and fees for the application and registration process can be found at our website.
TIP: Conducting trademark searches, and ensuring your brand names, logos and other unique ‘signs’ are protected through trademark registration as early as possible will help avoid situations where you cannot do anything about people using similar names, and will help avoid delays if/when you do need to take action.
We welcome any questions or comments you may have and would be happy to answer them and any other questions you may have about trademark registration in Australia.