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Business / Domain Name Infringement

Discussion in 'Small Business' started by Bullion Baron, 3rd Aug, 2015.

  1. Bullion Baron

    Bullion Baron Well-Known Member

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    If I have a business name that I would like to use (without giving too much away):

    A (wordA) (wordB)

    But there are already (existing) business names:

    Business 1: (wordA) (wordB) Services
    Business 2: (wordA) (wordB) (wordC) Consultancy

    Neither has a trademark on their name or promotes their name other than telephone book listing.

    What are my chances of getting away with the aforementioned name without infringing on the other businesses rights?

    The business I would be starting is an IT service that would be marketed to those in the same field, so not in direct competition with what they offer...

    I have read 'Determining if business names are identical or nearly identical' and feel that I would be in the clear, but would be interested in views of others...
     
  2. geoffw

    geoffw Moderator Staff Member

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    You've mentioned a trade mark- do you mean a business name? On the Business Names register? (I can't help any more than this, just clarifying).
     
  3. Bullion Baron

    Bullion Baron Well-Known Member

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    To clarify, neither has a trade mark for their name (or the two word term that makes up the part of their name that I want to use), but both have a registered business name.

    When I search for the name I want in ASIC's Business Names register they both come up as matches, but I presume that's because it drops the 'a' and just searches the two words that make it a partial match with the two similar business names.
     
  4. RPI

    RPI Property Lawyer, Town Planner Business Member

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    It depends on a lot of matters around it. You could be seen as "passing off" as in trying to pass yourself as someone else. There are quite a lot of variables depending on the differentiation between the classes of services that you want to provide and that they provide. Can be easily answerable of complex depending on that degree of separation.
     
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  5. Simon Hampel

    Simon Hampel Founder Staff Member

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    In my experience - provided there are no trademarks involved, and you are in separate industries and there is no obvious grounds for confusion between the companies - you'll be fine.

    I see a lot of "XYZ <some suffix>" type company names in the register.
     
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  6. Bargain Hunter

    Bargain Hunter Well-Known Member

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    We have previously had names rejected that were less similar to what you are proposing. I guess you go ahead and request it and see how you go.
     
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  7. Bullion Baron

    Bullion Baron Well-Known Member

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    I'm not sure I was clear enough in the original post. The (new) business would be offering an online platform for use by other businesses such as those with the similar business names (exclusive to that sector). So I'm not sure if offering services to those in the industry is considered the same as being in the industry... am I in the IT services industry or in the industry of those I'm providing the services to?

    For a comparable example:

    I want to launch a website for pig farmers and I want to call it 'A Flying Pig'. The online platform allows the pig farmers to contact & work with their pig buying customers in an easy fashion. The site also contains a public directory of the pig farming businesses who've signed up.

    There are two pig farmers with similar sounding business names, one is 'Flying Pig Services', the other is 'Flying Pig Consultancy'.

    Although I'm not a pig farmer (I'm an IT service provider) am I considered to be in the industry? Some confusion by customers is possible given that I exclusively work with those in the industry and have a directory of them on my site.

    Thoughts?

    I suspect it may be worth getting some legal advice before locking in the name.
     
  8. Bullion Baron

    Bullion Baron Well-Known Member

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    So when you apply for a business name it would typically be reviewed for closeness to others?
     
  9. Brian84

    Brian84 Well-Known Member

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    I think my situation is similar if it helps. I have just registered another company which is called platinum property inspections, now because there was already this business name when I went to registered mine I had to change mine to platinum property inspections (nsw).
     
  10. Bargain Hunter

    Bargain Hunter Well-Known Member

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    Yes it is, and probably depends on the reviewer to a degree.
     
  11. Simon Hampel

    Simon Hampel Founder Staff Member

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  12. The Y-man

    The Y-man Moderator Staff Member

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    I just saw a plumber's truck go past this morning for YahPoo! Plumbing, with the "YahPoo" done in the same styling as "Yahoo!"

    The Y-man
     
  13. miked

    miked Well-Known Member

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    No, it isn't and no, it doesn't.

    The business name will only be rejected if it's exactly the same as another name (subject to the recent changes Simon mentioned - which I'm not really on top of)

    Check out this article re. recent business name changes - explains things pretty clearly
    http://www.mondaq.com/article.asp?articleid=416874&email_access=on

    But here's where things get complicated...

    - even if you can register your business name, if your competitor doesn't like it and you are trying to trade off their image/brand (or if they think you are), they could sue you for passing off (misleading conduct). You don't have to be intentionally misleading to get in trouble for this.

    - trade marks can't be deceptively similar or substantially identical to another trade mark.

    If those other companies are well known, you're probably better off finding your own name, if for nothing else than to establish your own identity. It would also help with securing the right domain name. On the other hand, you could use that name, the other people never find out or don't care, and you all live happily ever after.

    If the business name is similar, but the colours you use are different, different font/layout/colour on website and promotional material and different logos - you reduce some risks.

    If your business name is similar to a trade mark, it's dicier and you should be more careful.

    (Final edit...) You can check if the business name is available very easily online: http://www.asic.gov.au/bn-availability
     
    Last edited: 14th Aug, 2015
  14. geoffw

    geoffw Moderator Staff Member

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    There are rules about what words cannot be used in a business name. Words like Royal, Anzac and the like. Also words deemed to be offensive cannot be used.

    I saw a case many years ago where the company name was a heavily disguised name which meant "where are we", with another word added and contracted into a single word. The name had been allowed and the company had been allowed to trade for a few years before somebody realised what it meant, and withdrew the registration.

    Edit: I see the name was allowed through again, now no longer registered now.
     
  15. beachgurl

    beachgurl Well-Known Member

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    I thought that to be sued for passing off you have to show that the conduct of the other party was misleading and deceptive? If there is a trade mark registration then the owner will just sue for infringement as its an easier case to win.
     
  16. willair

    willair Well-Known Member Premium Member

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    I always like looking up the banned and disqualified under your own name last time I looked there were several under my name but not one is me,or just some people u know and see what comes up..