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VIC Registering a Trademark - How Different Should it Be?

Discussion in 'Intellectual Property Law Forum' started by MistaP73, 9 February 2018.

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  1. MistaP73

    MistaP73 Member

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    I want to register a trademark that is a phrase. I've done a search and someone has registered the same phrase but with two extra letters.

    These are not the exact words used, but are a similar example:

    I want:

    Swimming Teacher


    This trademark is already registered:

    St Swimming Teacher


    Would my shortened version be different enough? Maybe if I went with Your Swimming Teacher?

    Thanks in advance. Hope someone can offer some help. It will be greatly appreciated.
     
  2. Rob Legat - SBPL

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    You generally won't be allowed to trademark a common phrase, eg "Swimming Teacher", as that would be unfair to everyone else who is a swimming teacher. "Your Swimming Teacher" may be sufficient.

    One of the biggest parts of trademarking is making sure you're not infringing on existing rights, so extensive searching in both the trademarks register and your target markets is recommended. Someone may be operating under the same or similar name, without a trademark.
     
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  3. MistaP73

    MistaP73 Member

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    Great. Thanks or your help.
     
  4. Rod

    Rod Well-Known Member

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    How does that work if a pool sends out regular newsletters and writes "discuss any health issues with your swimming teacher before class"
     
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  5. Rob Legat - SBPL

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    Context, as far as I understand it. I'll happily stand corrected if someone specialised in IP wants to enlighten us.
     
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  6. Leonard Mancini

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    Such use would not be regarded as "use as a trade mark" under s120 of the TM Act that deals with infringement. You can use TM's in many different ways without infringing them.

    Descriptive or comparative use is but one example. i.e. "Headlight is compatible with Ford Falcon model years ...". The TM's FORD and FALCON are being used, but not as a badge of origin. You are not saying, by referencing these words that you are the source of FORD or FALCON products.

    In the present case - its slightly different. A reference to "your swimming teacher" might literally be a reference to the person who offers swimming lessons. So that even if you did get a TM registration for YOUR SWIMMING TEACHER, mere use of the phrase will not infringe it.

    As Rob mentioned above, it is unlikely that you would get a registration for SWIMMING TEACHER for swimming teaching services as the words are totally descriptive. Any swimming teacher should be entitled to use the phrase "SWIMMING TEACHER" in their business name.

    Descriptive TM's are terrible in any case from an IP perspective as you can use them "descriptively" without getting stopped by the TM owner. That means that your competitors can get a LOT closer to your business name without infringing.

    The best TM's to register have NO CONNECTION to the services that are provided under them as any person trying to copy the name will be clearly doing so to ride off your reputation. They will not have the descriptive use excuse to fall back on.

    Hope that helps!
     
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  7. Rod

    Rod Well-Known Member

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    Thank you both for your well explained posts.
     
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