Legal Question in Intellectual Property in Australia

Title of work shares a name with a registered Australian business name

Background: I released a computer game titled ''X'' (not its real name) in 1998. I was recently contacted by a man in Australia who registered ''X'' as a Business Name (which is different than a trademark) in New South Wales in 1988. He claims that my title is an infringement of his rights ''under Unfair Competition and trade mark laws'' and he has threatened legal action if I do not agree to pay royalties for use of the name.

However, my initial research seems to say that an Australian registered Business Name does not offer the same protections as a registered Trademark, and, furthermore, has little legal power outside the state in which it was obtained.

Might my use of the title ''X'' actually be some sort of infringement on his business name ''X''? It may be relevant that my game is available for download anywhere in the world, including NSW.

Thanks.


Asked on 5/30/04, 12:36 pm

2 Answers from Attorneys
Tim Wishart McMahons National lawyers

Re: Title of work shares a name with a registered Australian business name

I assume you are not in Australia (I am).

The business name legislation in the various Australian States is primarily designed to allow a person to trade under a name that is not his or

her own.

A registered business name gives protection for that name in the jurisdiction in which it is registered. As you have discovered it is not a trademark.

You are selling a product that has the same name as his business. There is a distinction.

I do not believe (based on the limited information you have provided) that you are infringing the business name registration.

You are not carrrying on business in NSW and you are not trading under the name "X".

The demand has all of the hallmarks of a 'try on".

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Answered on 5/30/04, 5:33 pm
Lawrence Graves Coolidge & Graves PLLC

Re: Title of work shares a name with a registered Australian business name

Suggest that you contact Australian counsel as this is an issue on which few US lawyers will be capable of advising you. I would recommend:

Steve White

White SW Computer Law

Intellectual Property, Information Technology and Telecommunications Lawyers

Email - mailto:[email protected]

Web Site - http://www.computerlaw.com.au

Telephone +61 3 9629 3709 Facsimile +61 3 9629 3217

Postal Address - PO Box 452 Collins Street West

Melbourne Victoria 8007 Australia

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Answered on 6/02/04, 12:15 pm


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