VIC Business Name Trademark Infringing on Another IP?

Australia's #1 for Law
Join 150,000 Australians every month. Ask a question, respond to a question and better understand the law today!
FREE - Join Now

Eliesha

Member
6 February 2019
2
0
1
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

Lawyer
LawTap Verified
16 February 2017
2,452
513
2,894
Gold Coast, Queensland
lawtap.com
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?
 
  • Like
Reactions: Eliesha

Eliesha

Member
6 February 2019
2
0
1
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

Lawyer
LawTap Verified
16 February 2017
2,452
513
2,894
Gold Coast, Queensland
lawtap.com
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

Member
20 March 2019
3
0
1
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.