Friday, September 25, 2009

Trademark Bad Times :(

Back in July we applied to IP Australia to register 'Shoes of Prey' as a trademark in Australia under two classes covering shoes and shoe making. On Wednesday I arrived home from China to a 2 week old letter from IP Australia saying that there is another trademark 'Prey' in the shoes/clothing class and that we can't register 'Shoes of Prey' as the names are too similar. Ouch.

I immediately spoke to Jodie and Mike and we decided to contact the 'Prey' trademark owners to see if they would either be willing to sell it or consent to us registering 'Shoes of Prey'. Understandably it doesn't look like either of those options are going to pan out so it looks like we're back to square one with coming up with a new brand name.

We'd planned to launch next week so this is less than ideal, however it's lucky we found this out prior to launch as changing names, while time consuming, won't be too costly for us.

We've learnt some good lessons from this:

1. Do your trademark searches properly, and if there's anything similar to the mark you want to register look into it in detail. I am kicking myself for not doing this properly.

2. If you have the money (we don't) a trademark lawyer would be very useful to help out with this.

3. It would be nice if IP Australia didn't take 2 months to assess a trademark registration and that they had an option for emailing the results rather than posting them.

We want to come up with a great new brand name and we want to do it fast so we can launch, so we're going to put together some info and a competition to help us come up with a new brand name. More on that shortly :)


  1. hmmm..... what shit news :(
    good luck with the name search - I'll ask some of my 'creative' friends and see if there's anything worth while. else, worht bringing up @ mad pizza? :D

  2. Dean, thanks for the well wishes. Great idea to bring this up at Mad Pizza. Bummer that it's not for another 10 days but if we still don't have a new name by then that's a great group to brainstorm with! :D

  3. Bad news guys. But if i can add some non-legal yet useful advice.

    It's always better just to register a business name first which goes through the same name approval process as a company, but then gives you a grandfather clause for later company name registration / trade mark. Contrary to what people think a registered & trading business holds more weight than a trade mark in Australia for names...

    Also registering a business name takes less than a week for approval, which alos is reviewed by IP Australia, which is weird. I think it is becuase of the word only - where trade mark applications must go through visual approval of shapes / logos and the like.


  4. Hi Steve

    That's kinda dangerous advice there.

    Company names and business are separate from trademarks. When registering a company name or business name they just check the register for exact matches. When registering a trademark, a different register is checked ... and not just for exact matches.

    And you've got it the wrong way around. In most cases a registered trademark trumps anything else (including company name, business name and domain name).

    The best advice is to apply for a trademark as early as possible, get the results back from IP Australia and make a decision based on that.