Perth Web Design a Trademark?

No way it would happen. Well, I hope not anyway. It’s so generic, it would be similar to trademarking ‘Sydney Real Estate’ and preventing anyone from using that phrase – it won’t go ahead, and it will be thrown out, I’ll bet a buck on it.

Assessing purpose is part of the trademark application review process. What purpose would this tm serve other than to try to prevent others using the term? The obvious intended outcome is to dominate a market by monopolising a generic term for search engine optimisation purposes.

It should have Buckley’s chance of passing review. Nevertheless, as you suggest, Miles, its chances will be enhanced if no-one registers opposition.

Registering 5 days before Christmas suggests an attempt to keep the market unaware of the application. How did this come to your attention?

Just as a heads up, the second TradeMark application referred to here is mine, for PerthWeb. To be frank it’s only in response to the “perth web design” trademark attempt. Miles and I have actually been discussing this issue amongst ourselves and some other web design companies.

As many readers will know, PerthWeb has been around a long time, and we’ve never hassled anyone about using a name similar to ours, as it is pretty generic. Although there is one company I’m annoyed at for using a variation of our name with a variation of our logo 🙂

So my trademark is merely to protect our own name and prevent someone else trying to stop us using it. Nothing else.

Matt

Good move Matt, that at least will make the people reviewing the application think twice. I know personally of a similar situation like this that happened a few years ago. It was for a different set of words and the person registering was from another state however it did not go anywhere as the people using the words had been using them for over ten years and had actually been using them first. This was in the travel industry as well. Another example played out on the international scene and involved an Australian icon – the UGG boot. that one also failed when challenged
Personally, I feel that this should not be allowed. Once upon a time you could not register generic names or words for domain names and the same should be for this. Every business should do their due diligence on names and trademarks even logos (remember Miles when we did this for AWIA’s logo). Then this sort of thing would not happen. How are all the businesses in Perth large and small, suppose to describe themselves concisely.
I believe if it gets through the next stage all of us in the industry in Perth or even WA should oppose it.

With regards to a competitor to trying to blatantly pass off as someone else. Here is my view on this.

I think this might relate to a twitter account which GTP iCommerce registered in early 2009 prior to the business name of perth web design being registered a few months later.

I was contacted by Oliver about this twitter account with strong requests to hand it over, hence I believe he may be referring to GTP in the earlier post.

The structure of twitter uses the username as the headline but all other information clearly displays who we are.

The original twitter profile had a photo of me. I don’t look like Oliver and it mentioned GTP in the profile description visible to the right.

Any one who spent more than 10 seconds on the twitter account page would realise this. Also the twitter posts that did link to sites were GTP sites. The web link was also http://www.gtp-icommerce.com

I have however made a blatant attempt to be even more obvious with the graphics since the issue was raised in December.

Interestingly the twitter account webdesignperth was also already registered by another company which is the one I would have preferred because of the text ordering.

Whether there is search engine value in the keyword descriptive twitter name is contentious, however it is possible that it is or that it may come to be that it does have an impact. Certainly google is not the only place where future markets may do keywords searches for companies to find services. One of the reasons we registered the name early.

Being concerned that certain web 2.0 properties have “perth web design” or “perth web development” in them is akin to being concerned or objecting to a Google Advert has the phrase “Perth Web Design” in the title. Something than we might all do from time to time to advertise our services with Google Adwords

I think that myself and the hundreds of Perth Web Design companies certainly have the right to clearly state what our service is We are “Perth Web Design” companies. Any trademark over such terms would be restrictive of all companies.

I am impressed that such a keyword rich general business name or perth-web-design was able to be registered, even envious, especially when Perth Web as a name was already registered but registering a non brandable business name makes it more difficult to differentiate an identity. Unlike say BAM which is a unique term and much more brandable and unique to the industry.

I don’t agree that our ability to state the phrase “Perth Web Design” in our promotional material to market our services is deceptive in any way shape or form. It is what we do. Of course if one was trying to masquerade as another company to give them a bad reputation then this can be handled by the trade practices act.

Dale

Here is some incite in to the workings of the Trade Marks Act 1995 and the Trade Marks Office from a Trade Marks Attorney. Section 41 makes it difficult to obtain registration of a trade mark that is not capable of distinguishing your goods and/or services from those of other traders. In fact this section in effect provides 3 tiers of distinctiveness. Tier 1 is those marks which are inherently capable of distinguishing. Tier 2 are those that are somewhat capable of distinguishing, but not enough to be in Tier 1. Tier 3 are those which have no inherent capability to distinguish at all.

So what does capability to distinguish mean? Marks that are not likely to be wanted to be used by other traders are inherently distinctive. For example invented words, coined phases, unrelated words can be sufficiently capable of distinguishing in their own right. Descriptive words, common surnames, geographic names are typically not distinctive. However there is also reputation based capability of distinguishing. That is, by virtue of the extent of use of the mark it has a significant enough reputation to be able to distinguish the relevant goods and/or services from those of other traders. A good example is the burger chain based on the common surname of McDonald. This chain by virtue of the extent of its reputation has made this surname distinctive of burgers.

Trade mark applications that fall in Tier 1 (absent any other issues) will be accepted. Marks falling in Tier 2 will not be accepted unless the applicant can provide evidence that the limited inherent distinctiveness in combination with reputation based capability of distinctiveness provide sufficient overall capability to distinguish. Marks falling in Tier 3 will not be accepted unless the applicant can provide evidence of an extensive reputation based distinctiveness. The level of evidence required for Tier 3 is much more than for Tier 2 – think the scale of McDonalds.

Two points on practice. One, Trade Marks Office examiners are human – they make mistakes and they get it wrong sometimes. In my experience they are also usually conservative. Therefore their first “decision to reject” is sometimes arguable and a skilled Trade Marks Attorney acting for the Applicant can sometimes right an initial wrong “decision” by the examiner. Two, as mentioned there is a process by which others with an interest can oppose a perceived wrong “decision to accept”. Again skilled Trade Marks Attorneys can put each side’s case to a hearing officer for decision.

Even if a trade mark registration is achieved there are defenses to infringement provided in sections 122-124 which include prior use of a trade mark and use in good faith to indicate the kind, quality, quantity, intended purpose, value, geographic origin, or some characteristic, of the goods or services.

My advice: – 1) if you are choosing a new brand choose something distinctive, not something generic; 2) an initial refusal (or acceptance) from the Trade Marks Office is not necessarily the end of the story; and 3) make sure your brands are protected with trade mark registration. A good Trade Marks Attorney can help with all of these things.

Mr Wood comments that he has sprung into this trade mark action based upon other companies imitating his PERTH WEB DESIGN.

Oliver you have done very well to get to the top of the search results and you seem to be doing good business based upon it.

The only reason you are trying to trade mark the phrase is to dominate the keyword and push out your competitors. It is all very snake in the grass and your motivations are purely self serving.

The community finds your behaviour laughable in the sense that you are trying to own the very phrase that describes pretty much all of our business. And I am sure if you ever did get the trade mark you would ask others to remove it from there branding and begin a long process of filing law suits and upsetting a lot of people.

You sir are using some cheap tricks and you show a great arrogance in attempting to trade mark this keyword. You also directed someone to ‘hand over’ a twitter account that had Perth Web Design in it.

Who do you think you are?

The community is aware of you and EXPECT imitators because ultimately you are one to.

Who owns:

PERTHWEBDESIGN.COM

or

PERTHWEBDESIGN.COM.AU

[business name removed] are a bunch of con artists and should not be trusted this is [url removed]