Trademark Law Advice Needed

[DNA Tuning]

Deleted... for now.

[Mk3 AAA]

I'm not a lawyer, I can't give legal advice... but

There are defences to trademark infringement:
Like
-Good faith use of a name (s 122(1)(a))
-Prior continuous use of a common law mark (s 124)
-Mark invalidly registered
Those sections are from the trade marks act, I'm not sure whether that's current legislation or not.

etc.

Also groundless threats to sue might be grounds for an action against them, but would be hard if they're registered.

Can't remember how but also a way to try and get them removed from the register.

[gecko2k]

I asked a friend who is studying Law and he reckoned:

-Get a Lawyer ASAP
-the whole situation depends on the dates when the businesses were registered and if the products being sold are the same 'type' of products or not

He reckoned that when you started trading first under the name they shouldn't be able to force you to do anything, because otherwise every **** would be able to trademark business names and force others to change their name...

He compared it on a low level to the whole 'Hungry Jacks/Burger King' thing, were Burger King hat to rename their restaurants, because there was already a 'Burger King' somewhere in Oz....

[Mk3 AAA]

There are some good notes out there on this so don't be afraid to do a bit of googling (as much of a faux pas as it would be for a professional to do that), just make sure it's up to date and from a reliable source. No harm schooling up a bit before seeing a lawyer (although that might be an idea too... and time is important as mentioned.)

Here's one relevant section, of interest...

TRADE MARKS ACT 1995 - SECT 124 (from austlii, which was just a quick way to find it, use the actual parliamentary site to confirm it's accurate. )

Prior use of identical trade mark etc.
(1) A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to:

(a) goods similar to goods ( registered goods ) in respect of which the trade mark is registered; or

(b) services closely related to registered goods; or

(c) services similar to services ( registered services ) in respect of which the trade mark is registered; or

(d) goods closely related to registered services;

if the person, or the person and the person's predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before:

(e) the date of registration of the registered trade mark; or

(f) the registered owner of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark;

whichever is earlier.

Note 1: For deceptively similar see section 10.

Note 2: For predecessor in title and date of registration see section 6.

(2) If the unregistered trade mark has continuously been used only in a particular area of Australia, subsection (1) applies only to the use of the trade mark by the person in that area.




Passing off requires more sifting through common law, but it doesn't sound like a particularly unusual circumstance so the principals will be well stated,

IMO you're probably fine, but that's no reason not to cover off, if it turns into a game of nasty letter swapping perhaps remind them of the groundless threat.

Good luck, as it sounds like a pretty BS thing to be put through.

If you want a basic check-list for possible actions throw me a PM and I'll forward/direct to some useful notes,

[DNA Tuning]

Thanks guys, good to get a few different points/perspectives on the situation. Mk3 AAA, the points you have referenced are highly relevant to this - my situation is line for line as per these points; ie. I have used a particular trade mark before the registration of a similar trade mark.

It's just sad to see certain companies stoop so low - to go to these lengths to try and stop sole traders like myself from doing a hobby on the side. It's not a friendly industry, and reflects poorly on these larger companies who rely on bullying others to get their way.

Anyway, I am closing this thread; thanks Gavin, gecko2k and Mk3 AAA for your advice - I really appreciate it!