NSW Help with Some Terms Under Trademark Law?

[Tontenn]

We are looking into a couple of names in relation to a new business venture and on research of these items, we have come across some terms under trademark law that we don't understand and hope someone can help us with.

When we searched for an item, it came up saying it was lapsed and not protected? Effectively, what does that mean?

Another item said it was "remove non-use", does that mean it's available to purchase?

Answers will help us decide on the next course of action.

Thanks

 

[Iamthelaw]

What site are you using to search? Would it be possible that you post the trademark number?

You should search via IP Australia and pay attention to the Trade Mark Status.

Lapsed not protected - My guess is that registration has lapsed due to some reason ie, non renewal etc.

Remove non-use - Removed from registration, the comment would seem to suggest because the TM was not being used.

Again, for a clearer/accurate picture the TM number would be helpful. You should also check history and opposition whilst your at it.

 

[Tontenn]

Hi there thanks for the response.

Yes using the IP Australia page.

First trademark number is 1191956

Second one is 1096313

Hope you can explain both and if we could use them, or if we try to apply for them, will the owners or previous owners be informed of the application?

 

[Leonard Mancini]

Hi the first one was removed by the now owners of Mr Gay World - 1592112 which is currently registered.

You could apply to register Mr Gay Australia but it may well be blocked by 1592112. The old owners are not informed of your application as far as I know. In any case the owner of 1191956 has been deregistered.

The second one was never registered. I suspect for a s41 lack of distinctiveness objection. It is unlikely you would get any of those terms registered without evidence of use which shows the term had become distinctive for your services.

You should check to see whether any of these trade marks has been registered as a business name or for an ABN. They may be people trading using them without registration. They could also block your application if they used the mark first in Australia and continue to do so.

Leonard Mancini, IP Lawyer: Book Online | LawTap

 

[Tontenn]

Hi the first one was removed by the now owners of Mr Gay World - 1592112 which is currently registered.

You could apply to register Mr Gay Australia but it may well be blocked by 1592112. The old owners are not informed of your application as far as I know. In any case the owner of 1191956 has been deregistered.

The second one was never registered. I suspect for a s41 lack of distinctiveness objection. It is unlikely you would get any of those terms registered without evidence of use which shows the term had become distinctive for your services.

You should check to see whether any of these trade marks has been registered as a business name or for an ABN. They may be people trading using them without registration. They could also block your application if they used the mark first in Australia and continue to do so.

Leonard Mancini, IP Lawyer: Book Online | LawTap

Thanks so much for that response Leonard.

We have done an ABN and business name check. No one has a business registered as Mr Gay Australia, which leads me to believe that if we registered that name we would have a good chance of getting the trademark as well...Correct?

Does that also mean if we registered as a business name and as a trademark we could not be sued?

Applying for ‘My Gay Australia’, would we potentially be at risk of not being registered under s41 ‘lack of distinctiveness’ with the use of a geographic place such as ‘Australia'. Would a logo help combat that if we were to apply with a logo as opposed to just the words?

It would also be good to understand the process of an application, timing, cost, advice etc and likelihood of success given the confusing situation above.

That's as far as my investigations have gone due to my lack of legal knowledge. Are there any other questions we should be asking from your point of view?

 

[Leonard Mancini]

Thanks so much for that response Leonard.

We have done an ABN and business name check. No one has a business registered as Mr Gay Australia, which leads me to believe that if we registered that name we would have a good chance of getting the trademark as well...Correct?

Does that also mean if we registered as a business name and as a trademark we could not be sued?

Applying for ‘My Gay Australia’, would we potentially be at risk of not being registered under s41 ‘lack of distinctiveness’ with the use of a geographic place such as ‘Australia'. Would a logo help combat that if we were to apply with a logo as opposed to just the words?

It would also be good to understand the process of an application, timing, cost, advice etc and likelihood of success given the confusing situation above.

That's as far as my investigations have gone due to my lack of legal knowledge. Are there any other questions we should be asking from your point of view?

We have done an ABN and business name check. No one has a business registered as Mr Gay Australia, which leads me to believe that if we registered that name we would have a good chance of getting the trademark as well...Correct?

- Not so. Different rules apply and Mr Gay Australia may be deemed to lack distinctiveness, potentially. That does not apply to business name registrations.

Does that also mean if we registered as a business name and as a trademark we could not be sued?

- Not so again. Whilst a trade mark registration would protect you from allegations of trade mark infringement - it does not stop someone alleging misleading and deceptive conduct under the Australian Consumer Law.

It would also be good to understand the process of an application, timing, cost, advice etc and likelihood of success given the confusing situation above.

- Its a bit hard to outline all of that here - feel free to call me on 02 92479000 for a chat about it all
Leonard Mancini, Lawyer: Book Online