We are publishing this guidance because some of our clients have approached us after receiving a certain kind of call or email. These communications are generally from someone claiming to be a lawyer or representative of an organisation specialising in trade marks. They generally say something along the lines of “someone is trying to trademark your business name, and if they do so it will make things difficult for your business, but luckily we’re here to help you trademark your business name before this other party, for a price”.
Is this an official email from an official organisation?
First of all, we’d like to make clear that they are not a government agency, whatever claim they make. Government agencies do not contact businesses in this way. In fact, the official government trade mark registration agency, IP Australia, has made it clear that they will not contact you in this way, and they have published their position on such communications on this page. They provide the following as a sample email you may receive:
What are the possible consequences?
We can’t tell you for certain whether this is or is not a legitimate and legal business. It may be possible that another business is applying to trademark your business name. And if they succeed, it would put you in a position where you have to choose between contesting the trade mark, seeking a licence from the other business to use the trade mark, or trading under a different name. None of those are good options. However, IP Australia and other organisations have found enough red flags in these kinds of communications that it’s generally unlikely that any of this is true.
What should I do next?
Some of our clients have chosen to simply ignore these communications. If, despite the red flags, you are still worried about protecting your business name, this is also a valid response. If so, as a first step we’d recommend searching for your name and variants of it on the Australian Trade Mark Search, as this search encompasses pending trade mark applications.
If you are still concerned, your next step could be to register a trade mark. This option has its merits, whether or not there is truth behind any communications you have received, as it gives your name protection for at least 10 years. But it comes with a time and financial burden. You can carry out this process directly with IP Australia or with the assistance of Lawpath.
If you have any further questions regarding these communications or IP protection generally, Lawpath’s lawyers can assist you.
