One of the first things we advise clients who want to start a new business is to register their business name and to secure an internet domain name. However, a recent decision by the Australian Trade Marks Office is a reminder of the importance of registering your business name as a trademark.
Background
In 2006, Jason Boyce was learning how to create websites and wanted to provide a site that would allow Australian businesses to promote their products online. He was flicking through the thesaurus after thinking 'Typhoon' would be a good name and came across 'Twitter'. Boyce made enquires and came across no other businesses with that name, so he registered it, as well as the domain name 'twitter.com.au'.
In the US, Jack Dorsey, who was working at Odeo, a consumer podcasting company, came up with the idea of sending short, SMS-type messages to a small group of people and on March 21, 2006, the first 'tweet' was sent. What began as a prototype that was used as an internal service for Odeo employees, become what is known today as Twitter, a service that now has an estimated 140 million users.
The Twitter trade mark was filed for registration in Australia in October 2007 and once the service started to gain worldwide prominence, Boyce had applied to register the trade mark 'twitter.com.au' in 2009 to protect his business name. Twitter Inc. opposed the application and succeeded despite Boyce operating his business prior to the registration by Twitter Inc.
Legal Issues
Twitter Inc. succeeded in their trademark opposition on the basis that, although the two competing marks are not substantially similar services when looked at and assessed side by side, from the point of view of the consumer, there is a deceptive similarity such that it could cause confusion and lead to an assumption that the two services originated from the same source. The slight difference in the domain names, 'twitter.com' and 'twitter.com.au', did not aid in removing the likely confusion.
Boyce argued that there were circumstances which would justify the Registrar exercising their discretion to accept the application. However, despite establishing honest, concurrent use of the mark in question, he failed to establish the other factors that would allow the Registrar to exercise their discretion. There was no corroborative evidence that prior to filing, the opposed mark was in use for the services for which trade mark registration was sought.
The Practical Business Implications
The above case illustrates that businesses need give priority to trademark registration especially if they have built a significant reputation locally and have ambitions to expand nationally or overseas. It is advisable to conduct searches to ensure that the mark does not create confusion which could occur even if the goods or services provided are of a different description and under a different classification category. It is extremely difficult to claim prior use unless a significant reputation has been established by the business before the priority date of the opposing trade mark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
