

I’ve been running Nic’s Gardening for eight years. If someone else registers this business name as a trademark tomorrow, will I be infringing on their trademark?


There are two responses to this question: The technical response and the commercial response.


From a technical perspective, because your use of “Nic’s Gardening” pre-dates when someone else might file for the trademark (known as their “priority date”), they would not be able to sue you for trademark infringement because of a defence available that if you applied for a trademark registration you would be entitled to it.


This is because of your use before their priority date.


However, if you have only provided your services within a small radius (e.g. within 20 km of your home base), your use could be restricted to that particular area, which might stop you from being able to advertise more broadly, such as in directories (Yellow Pages), on the internet, etc, with a reach broader than those few suburbs.


The commercial response is that you may not have sufficiently deep pockets to be able to defend your position and insist on your legal rights.


If a franchise the size of Jim’s Gardening decided that they didn’t want a little guy somewhere trading under the same name, you could imagine what sort of legal pressure they would bring to bear.


Of course, there is a final twist in this tale; which is that the simple words “Nic’s Gardening” would be unlikely to be accepted by the trademark’s office, IP Australia, as a trademark.


As the words are descriptive of the type of service you provide – and the legislation provides that other traders with the name “Nic” should be able to use their name to describe similar services they provide – if you applied for trademark registration, you would need to do so in conjunction with a distinctive logo to avoid this initial rejection.


As if that is not confusing enough, if you are able to provide significant evidence of your eight years’ use of the trademark, this may be sufficient to overcome an initial rejection if you apply for the words without a distinctive logo.


I’m not sure this helps much – but hopefully it goes some way to answering your question.