NSW Registering Already Used Company Name - Legal Under Intellectual Property Law?

[Dialupp]

Hey guys, so I have a question.

I have been looking in Australian database and in American database to see if a company name is available and it is, but when I type that name on google, it shows the name of a company and it seems registered. It's located in Germany.

If I register it as the same name, could I get into legal trouble under Intellectual Property Law?

 

[Kim Walters]

There are no intellectual property rights in a company name. The relevant question, rather, is who owns the rights in the trade mark in Australia? - unless you plan to trade in Germany.

In Australia, rights in a trade mark can be established either by use or by registration. The key advantage of trade mark registration is that the rights arise from the registration itself not from any reputation that is attached to the mark.

To acquire rights in the name or mark so that you can use the name for your company and branding without any risk of infringement, you should apply for a trade mark registration. You need, however, to ensure that your name is available before you invest your time and resources otherwise you will risk trade mark infringement. Appropriate clearance searches should be undertaken including Google, Directories such as Yellow Pages and White Pages, Newspapers and Trade Magazines and Publications, Company and Business Name Register and Trade Mark Office Records.

 

[Dialupp]

This answer is sort of over complicated. Can you have same company names if both companies are in a different country? Also I found the name in the German databases, do you have to look at all country databases not just Australian?

 

[Kim Walters]

Are you planning to do business in Germany or any other country?

If you are planning to do business in Australia only, as long as a person does not have earlier rights to the name in Australia or it is not the name of a very famous company e.g Coco Cola, you are free to use it. That is, you need to do a clearance search for trade mark rights as that is the only form of intellectual property that gives you rights in a name. Registration of a company name does not give you proprietary rights in the name, only a trade mark can do that.

 

[Dialupp]

Planning to do it in Australia. I just wanted the name. It's just an online sort of business thing. I am a software developer and all business related activity is on my website.

Ok, so what I have seen from what you have written is that I can use the name as long as someone has not claimed it earlier in "Australia". When you say clearance search for trade marks right, should I search that just in Australia or in Germany and other countries too?

 

[Kim Walters]

Hi

Trade marks rights are territorial so you can own a trade mark in Australia, and another person can own exactly the same trade mark in Germany.

So, trade marks rights attach only to the territory in which the trade mark application is made. That is what I mean by territorial. As long as it is not a world wide famous trade mark like Coke, Red Bull or Virgin, for example, there should be no problems. Generally, a person cannot get a monopoly on a trade mark name (world wide), as you can only obtain protection in the country that you file in (provided registration is granted).

Yes, you can use it and own it in Australia as long as no one here has a better right than you.

If you file a trade mark here in Australia, a trade mark attorney should be able to give you some guidance as to whether someone else has been using it and whether you are likely to have any problems with it.

A 100% guaranteed clearance search is not easy but you can do some of the work yourself to see if someone else has started using it in Australia.

If you are only using it in Australia, you only need to worry about Australia and whether someone here has started using the name (as a trade mark) before you whether that conflicting mark is registered or unregistered.

 

[Dialupp]

Ah, ok, makes sense. Thanks, it's much appreciated.

 

[Kim Walters]

You are welcome