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New Business Name Similar to Existing Registered Trademark

Discussion in 'Intellectual Property Law Forum' started by Luke7, 11 June 2015.

  1. Luke7

    Luke7 Well-Known Member

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    Sorry if this has been asked before, but I would like to register my business under the business name ilumi marketing. I have checked online and there is only one company with "ilumi" in its business name: illumi LED; a manufacturer of LED lights.

    I see that there is a little R in a circle after the word ilumi, which means it's a registered trademark. My understanding of registered trademarks is that they can only be trademarked in the same business category, which means I should be able to use that word in my marketing business name without fear of trademark infringement. Is this correct?

    Thanks in advance
     
  2. Sophea

    Sophea Well-Known Member

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    Hi Luke7,

    Yes a registered trade mark gives the owner exclusive rights to use it for the goods and services that it is registered under. Therefore if your goods and services fall under a different category from those listed for this trademark then theoretically you should be free to use it. If you are going to use it as a business name, I would consider registering it as a trademark yourself, as it provides additional protections and if your application is successful you can be relatively certain that you are not infringing the other existing mark.
     
  3. Luke7

    Luke7 Well-Known Member

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    Thanks Sophea,

    I've done a preliminary search on the IP Australia website and the business name I wish to use does not appear to be trademarked. I also called IP Australia and was told that if it my business name doesn't come up as a trademark in the search, there is a very good chance that I will be able to trademark it.

    She did ask me what country the ilumi LED company is trademarked in, and it looks as though its an American company based in Texas. Does that further confirm that I should have no problems registering it -- I was under the impression that trademarks apply world-wide.
     
  4. DennisD

    DennisD Well-Known Member

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    Hi there Luke


    Sounds like you've done some great leg work getting in touch with IP Australia, well done!


    I'm assuming you did your 'preliminary search' through ATMOSS. It's worth being aware that a comprehensive search can involve a number of search combinations of their database, and some of these searches may yield more results than others.


    The fact that the trademark in question is (based on your early research) only registered overseas is a better situation for you than if it were registered in Australia. However, for my part, nothing is confirmed until the trademark is registered.


    This early stage research can be a bit tedious, however is well worth the pain, because the main thing you want to avoid is building a business/brand and then running into trademark issues.


    Let us know how it goes.
     
    Tim W and Sophea like this.
  5. Luke7

    Luke7 Well-Known Member

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    Yes, I did it through ATMOSS. There are no search results for ilumi marketing. Even for the word ilumi on its own, all I get is similar names like hilumi, iluminess, illuminati etc.

    I must say, I thought this issue would be a lot more black and white, instead of some shade in between. My reasoning is that since the sole purpose of trademarks is to distinguish one business or product from another, there should be no issue whatsoever when the same word is used in a different service or product category,and in combination with a word that clearly distinguishes it from the the other business.

    I mean what legal case would ilumi LED, have against me? After all, there is Pandora Jewellery, Pandora Radio, Pandora streaming service etc.
     

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