NSW Protecting a Trademark - Apply to Court for an Injunction?

[DavidSoutherland]

My son-in-law registered his trademark and trading name in 2015 at a cost of $12K. A business in a nearby regional town has opened with a name very similar to his business name and easily confusable - selling identical products. He sent the equivalent of a cease and desist letter from his Trademark solicitor ($1K) and the competitor replied that they were not similar but undertook not to open in other regional towns nearby.

My son-in-law's Trademark solicitor told him that it would cost at least $30K to attempt to defend his business name.

Is it possible, as a cheaper alternative to apply to the Local Court for an injunction to stop the impersonator from trading under the similar name and put the onus on the impersonator to justify that his name is not trademark infringement?

Thanks

 

[Rob Legat - SBPL]

It's generally not good business ethics or practice to comment on another practitioner's fees - but $12,000 for a trademark and trading name, and $1,000 for a cease and desist letter, is excessive. I would certainly hope he got more than those for the price he paid.

As to the alleged infringement, whether he has good prospects of any case will come down to an examination of the relevant facts: how close is the similarity? would there reasonably be confusion? do the products' marketplaces intersect? and so on...

In respect to applying to a court, I'm not a litigator but you might have an issue with the following:
Section 190 of the Trade Marks Act sets out the prescribed courts for an infringement action: Federal Court, Federal Circuit Court, and the Supreme Courts of the various states. Although there is no prohibition against taking action in another court, it is subject to being within their jurisdiction and local courts/magistrates court may not have jurisdiction to grant equitable relief (i.e. injunctions).

 

[Tim W]

$30K?
He needs a new IP lawyer.

And no, the Local Court* will not hear an "infringe trademark" action.
They don't have jurisdiction.

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* I infer from your use of this term that you are in NSW

 

[DavidSoutherland]

$30K?
He needs a new IP lawyer.

And no, the Local Court* will not hear an "infringe trademark" action.
They don't have jurisdiction.

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* I infer from your use of this term that you are in NSW

Thanks, yes we reside in country NSW.
We need to investigate whether we should appeal to ASIC for a review of their decision to grant registration to the other bloke.

 

[Rob Legat - SBPL]

I wouldn't bother with that. ASIC don't police the area and never have. You can register a company with one digit's difference without any issue whatsoever.

 

[Tim W]

I wouldn't bother with that. ASIC don't police the area and never have.

I agree about ASIC. They'll be no help here.
Think instead about IP Australia. They are the regulator. But any action will have to be on your own account.

You can register a company with one digit's difference without any issue whatsoever.

Except where doing so would amount to (or facilitate) either passing off, or misleading and deceptive conduct.
Noting, of course, that registering a company name, and registering a trademark, are different transactions.

If you do want to sort this, then feel free to PM me directly.
I will put you in touch with the best man in the field.

 

[Rob Legat - SBPL]

Except where doing so would amount to (or facilitate) either passing off, or misleading and deceptive conduct.

My apologies, I should have stipulated that my comment was in the sense that ASIC will allow company registration no matter how close it is to any other registered company name - as long as it is not exactly the same.