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VIC Purchased Business Name Already Exists - Options?

Discussion in 'Intellectual Property Law Forum' started by Brenden, 16 September 2016.

  1. Brenden

    Brenden Active Member

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    Hey

    I recently purchased a business name and domain name, to find out that a website for the business name already exists. I plan on going large with the business but this website is in my way.

    I'm wondering what my options are.

    Thanks
     
  2. Rod

    Rod Well-Known Member

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    Offer to buy the domain or if they are cybersquatting read this.
     
  3. Kim Walters

    Kim Walters Well-Known Member

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    A business name is a name that is used to identify a business. A domain name is an internet address and you are given the right to licence the use of that IP address for a certain period of time.

    Only a registered trade mark can give you "ownership" of the brand name. A trade mark is used to identify you as the source of goods or services in the marketplace. It is possible to register a trade mark that is the same as the business name but their registrations achieve different objectives because a trademark is used to brand a product or service and a business name is to identify the legal entity that owns the business.

    As to the domain name that has been "snapped up" by another domain registrant, your business name does not give you better rights than the current domain name registrant. Your options are to find another domain name, approach the current owner of the domain to find out if they will negotiate a sale to you or find out if you have grounds to lodge a complaint or start dispute resolution through the .auDA at Home » auDA
     
  4. Rod

    Rod Well-Known Member

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    Doesn't invalidate your legal points, but Domain name = Internet address != IP address.

    Domain name gets converted by look ups to an IP address. That IP address can change while the domain name doesn't.
     
  5. Brenden

    Brenden Active Member

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    Hey thanks heaps for the info.

    I've narrowed it down to trademarking it to secure it but then my next question is how much trouble or what's going to happen if I trademark my business when this small website and Facebook page exist. They have no business name, no trademark.

    My startup business plan would've been perfect if this problem didn't arise. Now I've got to get around this problem before I can continue. I can't afford a lawyer hence why I'm here looking for law answers.

    Oh and if anything I'm probably the cybersquater unintentionally. I did all this work, I paid the money, then found a website exists.
     
  6. Kim Walters

    Kim Walters Well-Known Member

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    Australia operates under a ‘first to use’ (rather than a ‘first to file’) wherein the first to use a trademark in Australia obtains rights under the common law. The first to use a trade mark as a "badge of origin", that is, to identify as the supplier of the goods and services in the course of trade, owns the trade mark. Not the first to register it.

    Therefore, if another person has used the trademark before you as a trade mark in the course of trade, they have an earlier and better right to the trade mark than you under the common law. In sum, the first person to use the trade mark in the course of trade or, if there is no use, to apply for registration, is the owner in Australia and is entitled to seek registration.
     
  7. Brenden

    Brenden Active Member

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    I read that like 10 times and to cut it short, if I trademark it before the other person, making it mine gives me control over it and they have to stop using it? I think that's what I got out of it.
     
  8. Kim Walters

    Kim Walters Well-Known Member

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    That is not correct.

    The person who uses it first (as a trade mark) owns it. Not the person who registers it first.

    If they have used it before you as a trade mark, they have a better right to it under the common law (even if they haven't registered it yet).

    This area of trade mark law can be complex. You should seek a trade mark attorney's advice who can consider the particular circumstances of your use and their use.
     
  9. Brenden

    Brenden Active Member

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    Ok, so trade mark's not going to work. That's cool but it still leaves me with get around this website. I'm building a app for a phone and I've got the name and .com.au

    The .com is a similar idea of my app, so in the end I'd probably have to buy them out but before I publish and yeah, any other ideas?
     
  10. Kim Walters

    Kim Walters Well-Known Member

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    If you are starting a new business, it is very important to ensure that you have trade mark rights to the name.

    That is, you are cleared to use the name otherwise you may be up for the expense of re-branding later or be the recipient of a "cease and desist" letter from the owner of a registered trade mark. You can research the following data bases to find out it someone has a better right than you:

    Google, Directories such as Yellow Pages and White Pages, Newspapers and Trade Magazine and Publications
    Company and Business Names Register (ASIC and ABN)
    Trade Mark Office records

    A registered trade mark can be a good defence to a "cease and desist" letter that states you are infringing another's trade mark.

    As to the problem with the website, people buy and sell domain names all the time. You can check out one of the biggest markets if you google SEDO ('The world's leading domain marketplace'). That is a matter for commercial negotiation. By approaching the owner of a website to purchase the domain, if that person is the owner of the trade mark for the name, you are potentially "tipping them off" as to your intentions in relation to the name.
     

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