VIC Intellectual Property Law - Change My Business Name?

[Mar.celito]

Hello, everyone.

I am about to start a small business and after an internet search, I realized the business name I chose is in part similar to another business name with a TM registered for the same category product, which anyway sounds very similar to another one that deposited the TM before them.

My question now is: Based on your experience, could this similarity create legal problems to my brand under Intellectual Property Law in the future?

I will use fake names for now, but that really reflects the case.

Let's say my brand's name is Hellusion and sells men's leather bags. The website, blog and everything will reflect an unconventional lifestyle and adventurous people traveling the world.

After search, I realize a more famous brand is protected under Australian TM, using the name State of Illusion, but they sell female bags to a completely different audience.

Before them, though, other brands already deposited a TM for the same product category using the names

- Illusion Outdoor, selling camping equipment.
- And Illusion of Paradise, which sells ladies totes and accessories as well...

Safe to keep my name or better change?

Please, any help is more than welcome!

 

[Sophea]

If you are going to be registering a TM under that name, the Trade Mark office will decide that for you. If you just intend to use that as a business name, the only way you will likely run into problems is if one of those other TM holders decides that your name is deceptively similar and takes legal action against you. You can take that risk or change your business name now to avoid the risk. Whether a court would decide your name was deceptively similar to the others is difficult. In my personal opinion I think it would not be deceptively similar, as it creates a new word, but I'm not the TM office so can't really say.