VIC Online Businesses with Similar Business Names - Cross-Continent Challenge Possible?

[Mandy Singh]

A hypothetical scenario.

I have an online directory search & e-comm site based out of India called Otto.Com. The purpose of this website is to list all ottoman makers & servicing people globally. As I start promoting it, I realised that someone has a company by the name Oto in AU & is in the same industry but primarily in e-comm (selling ottomans online).

No trademarks are registered by either me or them yet.

My website is Otto.Com and theirs is Oto.Com.Au. While I will not have a registered entity in Australia and all my revenues from different countries will roll up to the India entity, is there a possible challenge in both the cross-continent companies having similar business names? Especially when we operate in the online world?

 

[Victoria S]

Hi Mandy,

I cannot say whether or not there would be grounds in India for the rival company to challenge your use of that name, as I am not familiar with Indian law. As far as Australia goes, Australian TMs are only registered and valid in Australia, however, it is possible to obtain international registration of a trademark either by registering it individually with different countries or via the Madrid protocol.

However, there are other common law actions that a rival can take against you if you use similar branding, such as an action for "passing off" which is not confined by the same regulations as trademarks. There was a case Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471 which involved a company suing a foreign-based website which was selling a similar product with the same name.

Ultimately the plaintiff failed to establish an action of passing off because it was unable to demonstrate that it suffered actual damage or probable damage as it was unable to prove a significant number of sales were taken away from it. Secondly, the court found that there was no TM infringement because the offers on the foreign site were not specifically targeted or directed at consumers in Australia.

Therefore, if you are targeting consumers in Australia you may have issues with Trademark infringement, regardless of where your company is located.