VIC Business Name Trademark Infringing on Another IP?

[Eliesha]

Hopefully, this is a simple question... I really don’t know.

My brother has registered a business name, let’s say it’s “Blue Elephant TV*” and wants to Trademark it. There is an existing registered TM under “B Blue Elephant Live*” in the same class.

Would using “Blue Elephant TV” be infringing in this IP?

* Names are for example only, but the naming convention is the same

Class 41:

Children's entertainment services; entertainment; production of live entertainment; television entertainment; Internet games (non-downloadable); providing digital music (not downloadable) from the Internet; pay television entertainment; television entertainment; sporting activities

 

[Rob Legat - SBPL]

From the trademark owner's perspective - it's absolutely infringing.

From a realistic standpoint in very general terms, the question is: would a reasonable person be confused between the two that they're not the same thing? If the answer is yes, then there's likely an infringement.

The other consideration is that if the trademark owner is litigious, is it worth your while to even test the matter?

 

[Eliesha]

From the trademark owner's perspective - it's absolutely infringing.

From a realistic standpoint in very general terms, the question is: would a reasonable person be confused between the two that they're not the same thing? If the answer is yes, then there's likely an infringement.

The other consideration is that if the trademark owner is litigious, is it worth your while to even test the matter?

Thanks Rob - that was my opinion too. No way to know if the owner is likely to be litigious, I can't find any evidence of the TM being actively used, but it is registered until 2021 and I would hate for my brother to invest in this name only to find out he can't use it.

Now I just have to hope he doesn't shoot the messenger - that's what usually happens in my family when I bring up practical considerations that interrupt their pipe dreams.

 

[Rob Legat - SBPL]

If the trade mark isn't in use, that could be a important factor. You can't just park a trade mark - it's 'use it or lose it'.

 

[Robs]

This company name is similar to the previous rebranding. You must convince your brother to come up with a more unique trademark. It will be better for future business.