James Omond replies: Unfortunately, your experience is all too common in business, and illustrates a number of traps for the unwary. First, there is the confusion between business name registrations, company names, and registered trade marks. You thought you had registered the name of the business as a trade mark, when it was only registered as a business name. Business name registration does not give you any rights to use that name at all, and no protection from other people who say you can’t use that name.
Let me say that again – a business name registration gives you nothing!
Some people say business name registrations are a cynical grab for money by cash-strapped state governments. I won’t go into that, but some state governments (you know who you are!) accept ridiculously similar names and pocket the application money.
The same applies to company names – just because you have a registered company name does not mean you can use that name as a “trade mark” – that is, to brand your goods or services. Ditto for domain names.
The only way you get a “proprietary right” in a brand is to register it as a trade mark with IP Australia. You can do this yourself, but be warned it is not always as straightforward as you might think, and it often pays to use a registered trade mark attorney to do it or you.
The other point of note is that a registration for your brand would need to be in one of the classes which deal with food (such as “class 29” for example), whereas the advertising agency’s brand would be registered in the relevant services class (“class 35”) – and neither of the businesses could probably do anything about the other, because their offering is not sufficient similar (think of WC Penfolds Stationery, Penfolds Wines, and Penfolds Holden).
As a practical suggestion, if you are having trouble with people going got the ad agency’s site, why not approach the ad agency about some sort of a co-redirection deal, whereby each of you has the other’s logo in a small but prominent place on their home page, which provides a link through to the other’s website. They may be experiencing a similar problem, and if you are otherwise generating a reasonable amount of traffic to your own site, it should be equally attractive to them.
James Omond runs his own Melbourne-based commercial legal practice Omond & Co, specialising in the area of intellectual property (trademarks, copyright, etc). He is a registered trademarks attorney, and was the Australian Young Corporate Lawyer of the Year (back in 1999, when he was almost young). James also advises on a broad range of commercial matters, such as buying and selling businesses, partnerships and joint ventures, trade practices, advertising, marketing and promotion.