NSW Two Businesses with Same Name - What to Do?

[Erin Kelly]

I have just been contacted via Facebook by a man in California, US (I am in NSW Australia) somewhat accusing me of 'borrowed interest' regarding our business names.

We do have the same name, however, borrowed interest did not factor into it at all.

My business is a photography business (I am the photographer / sole operator), his is news. Reviews on photo gear, books, exhibits, plus videos and interviews with masters of photography, and photo resource pages. Both are called Photoinduced, which by definition is induced by light, hence why i chose the name.

Anyways I am worried he may take legal action, given his tone in the messages... What are the legalities in this kind of situation.. If you need anymore info please ask.. all help appreciated.

Thanks!

 

[Iamthelaw]

Has the Californian man registered a trademark for his company?

Have you registered 'photoinduced' as a trademark here?

Trade marks are regulated on a country to country basis. Even if he has filed an international trade mark via the Madrid Protocol, in order to have a worldwide trade mark he would have had to have registered in every country he seeks protection in.

You should give some thought to registering your name as a trademark here via IP Australia.

 

[Erin Kelly]

Has the Californian man registered a trademark for his company?

Have you registered 'photoinduced' as a trademark here?

Trade marks are regulated on a country to country basis. Even if he has filed an international trade mark via the Madrid Protocol, in order to have a worldwide trade mark he would have had to have registered in every country he seeks protection in.

You should give some thought to registering your name as a trademark here via IP Australia.

Thank you so much for your response! So he does have the name trademarked, though i am not sure what that country it covers. If he has trademarked it for Australia, what would that mean then? if he wanted to could he take legal action against me?

 

[Erin Kelly]

Thank you so much for your response! So he does have the name trademarked, though i am not sure what that country it covers. If he has trademarked it for Australia, what would that mean then? if he wanted to could he take legal action against me?

Also, I haven't got the name trademarked, though definitely considering it, if i am able to.

 

[Iamthelaw]

If he has trademarked it for Australia, what would that mean then? if he wanted to could he take legal action against me?

If he does have it registered in Australia - Yes, he could bring an action against you. Try to search via the IP Australia trademark website to see if it is registered in Australia.

Also, i haven't got the name trademarked, though definitely considering it, if i am able to.

Registering your trademark would be a good first step.

 

[Kim Walters]

In Australia, rights in a trade mark can be established either by use or by registration.

He will not have an exclusive right to use the name in Australia as a trade mark owner unless he can establish first use of it here as a trade mark (common law rights) or otherwise, that he has a registered trade mark.

It is an actionable offence under the Trade Marks Act to make groundless threats of trade mark infringement.

A registered trade mark is a smart move. It will give you exclusive rights to use that trade mark in relation to your goods and services and it is also a good defence to allegations of trade mark infringement.

 

[kimsland]

given his tone in the messages...

Yes get your business fully registered and trademarked; then 'message' him and say, "I'm a bit concerned about your business name, I just got mine fully registered today, will you be closing yours any time soon?" Too spiteful?