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.
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
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
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
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
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.
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