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NSW Trademark Dispute - Do I Hand the Business Name Over?

Discussion in 'Commercial Law Forum' started by Aurelia, 23 July 2015.

  1. Aurelia

    Aurelia Member

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    A few years ago, I was a sole distributor for a product in Australia (let's say the product I was selling was called ABC) and registered the business name ABC Aust to help my business efforts.

    Our relationship subsequently soured and I no longer distribute that product. However, the overseas company I was dealing with has just found out that I still hold the Australian-ised company name of their product and are demanding that I hand it over.

    The product name is trademarked overseas but not a trademark here in Australia. It was an available business name when I got it - so do I have to hand it over?

    Any help greatly appreciated.
     
  2. Rod

    Rod Well-Known Member

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    Based on what you described they would have a very weak case unless there is a clause somewhere in your original agreement saying you have to hand the name back to them on demand.

    If you no longer want to use that name and there is no clause saying they can get the name back, ask them how much it is worth for them to buy it back from you.
     
  3. DennisD

    DennisD Well-Known Member

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    Hi there


    I take a different approach to this.


    Do you plan to use the company for your own purposes? Otherwise do you plan to deregister it? Or will you pay registration fees and paperwork each year but not use the company? In my opinion the latter would be a real pain, and probably ASIC doesn't allow it anyway, because it would be squatting.


    Ex-distributors or ex-employees who feel upset about this or that and who hold out business names, domain names, trademarks, whatever, in an attempt to milk a business is not new and often does not work, because after the supplier puts in leg work you might find yourself with threatening letters and on the hook for costs in responding to their (sometimes increasing) demands.


    Anyway read over your distribution contract again and you might find a clause entitled ''survival'' (or maybe these provisions are buried elsewhere) which will likely reference a bunch of provisions in the contract (often including IP and goodwill) which set out rights and obligations which continue even beyond termination.


    Let's us know how it goes, and let''s see what other contributors have to say too.
     
    Tim W likes this.

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