enforce (or defend) such ‘unregistered’ rights
the owner of the trade mark must establish a
reputation in the trade mark, which can be a
very costly and uncertain exercise to prove.
Trade mark registration, however (subject to
some exceptions), gives the owner the right
to the exclusive use of that trade mark in
relation to the goods or services for which
the trade mark is registered. It also provides
rights to stop others from using the same or
a similar trade mark, as well as a ‘statutory
defence’ against infringement of another
registered trade mark (but not a defence that
you have ‘passed off’ on someone else’s
reputation.) For further information on trade
marks go to ipaustralia.gov.au.
Do your homework
Considering the points above, it is therefore
important before using a company,
business or domain name, or trade mark,
that proper searches are conducted to see
if someone else is already using and has
established a reputation in the name and/
or has a registered trade mark for the same
or similar name.
Just seeing if a business, company or
domain name is available for registration is
not sufficient to protect against potentially
being required to stop using the name or to
prevent someone else from using it.
This article has provided a general outline
only of some of the issues to consider
in using a name and trade mark in your
business. However, before doing so, specific
legal advice should be obtained in relation to
the proposed use of a company, business or
domain name or trade mark.
Leon Ponte, Juris Doctor (Law) is a founding principal of Ponte Earle – Business Lawyers for Business® and
is in a select group of approximately only 110 lawyers accredited as specialists in business law by the Law
Institute of Victoria. He has a strong personal interest in the fitness industry, holding Certificates III and IV, and
has provided advice to fitness facilities, personal trainers and suppliers to the industry. ponteearle.com.au
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