Trademark Law - When should you register a trademark?

The answer to the above question depends of course on who you are, what you do, and what your plans for the future are.

However, if you are serious about your business, you should probably register a trademark as soon as you register your business name - if not before.

This presupposes you have done the usual checks required when brainstorming a good name to use for your business, product or service, and you are not infringing upon someone else's trademark.

Sole traders of course can use their own name, but there is a case to be made for the trademark of your actual name in certain situations.

Katy Perry v Katie Perry

Take for example the Australian fashion designer, Katie Perry.

Katie first registered her business name in 2006. At the time, she did the right thing and looked into registering a trademark, but was advised that because she is using her own name, there was no need to trademark it.

In 2008, a friend of Katie's suggested she trademark her name after all, so she started the process. Not long before the trademark was due to be issued, Katie received a shock when lawyers for the singer Katy Perry attempted to submit an objection to the trademark, and extend the period for which an objection may be lodged.

The case was heard in court on Thursday morning (17.07.09), and as a result, it is a win for Katie, the designer. The objection to her trademark registration has now been withdrawn, and it will now be granted. Katy, in a statement to her support network after the decision, said:

It has been a David and Goliath fight, but a positive outcome came through determination, staying positive and having the right support. I can now continue designing without this cloud over my head.

Anyway, hindsight is great, but if Katy had registered her trademark in 2006, the current situation would more than likely not have presented a problem - at least not in Australia.

Katie's use of her name as a registered business with an ABN predates Katy Perry's use of her stage name.

Katy Perry was actually born Kathryn Elizabeth Hudson, and only started using the stage name "Katy Perry" in 2007.

This situation was solved amicably between the two parties, but you can show your support for Katie's business (designer) by going to Facebook.

To summarise...

So the message is, when deciding upon a business name, ensure you check with ATMOSS and ASIC first, and even do a basic Google search to see if anyone else is already using the name you want to use. Note that business name registration offices WILL NOT perform these checks for you - they don't care about trademarks - that is YOUR responsibility to check.

If you find a trademark the same as, or similar to the name you want to use, you might do well to brainstorm another name. If, however, you find no registered trademark, but you find a business name registration similar or the same, you then have to decide if you really want to use a name someone else is using, especially seeing as how registering a trademark later might be difficult - particularly if you are conducting a business in the same class as the business name holder.

Above are only a few of the ins and outs of trademark registration. To be really safe, it would bode you well to seek the services of a professional trademark attorney. justweb™ uses and recommends the services of:

Dilanchian Lawyers & Consultants
The University Centre, 210 Clarence Street
Sydney NSW 2000 Australia
Tel (02) 9269 0229
Email Noric Dilanchian
Web www.dilanchian.com.au

More information

Trademark Registration | Business Name Trademark | Trademark Symbol
justweb™ Statutory Law Rights

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