Perth Web Design a trademark?

Posted January 14th, 2011 in Business, Industry

Trademark

I’ve been involved in the Perth web design industry for 15 years now, and have often referred to my business, Bam Creative as a Perth web design company. That’d be correct; we’re based in Perth, Western Australia and we offer web design and web development and other associated services.

A cursory glance at a number of other websites of Perth web design businesses, shows that the phrase ‘Perth web design’ appears on nearly all of them. Bam Creative certainly has used this phrase since we started in 2002.

So it came as quite a surprise to me, when I was alerted to the fact a local company has applied for a trademark on the term ‘Perth web design’. In fact, they only lodged the application last month, on the 20th December 2010.

Now, I’m no trademark attorney, but in my humble opinion, it seems somewhat far-fetched that an application for such a generic phrase could be accepted, however we all know that law and reality don’t always see eye to eye.

On this information page on IP Australia, it states that…

Types of trade marks that are difficult to register
A trade mark that describes your goods (eg. radios) and services (eg. electrician). It must not be a sign that other traders may wish to use to promote or describe their goods and services, nor can it mislead the public about the nature of your goods and services.

It is also very difficult to register a geographic name or a common surname as a trade mark, however, someone who has used one extensively for a considerable period of time may be able to achieve registration.

Given that the application is for terms that describe services, as well as a geographic location, I would imagine that this would get rejected, however it sure is an interesting case, and I for one will be watching it closely.

Searching the IP Australia ATMOSS database of lodged trademark applications, you’ll see that application 1400795 is applying for the term “Perth web design” as a trademark, in the class of web portal services, which includes designing or hosting of web sites. (The easiest way to search is to ‘Login as Guest’, then use the second search box, and enter the application number 1400795).

The application is currently at a status of ‘Indexing Approved’, which simply means it has been added to the database. The next step from here, is for the examination to be undertaken, before being accepted and published for the opposition period of three months.

If you are involved in the Perth web design industry, and keen to oppose this trademark application, should it be required, then there is a Guide to opposing registration of another person’s trade mark available on the IP Australia website, along with a number of other guides.

I’ll post an update to the application when it has moved through the appropriate processes…

Tags: , , ,

16 Responses to “Perth Web Design a trademark?”

  1. Adam Fitzgerald Says:

    There’s no way under the TM legislation that will be approved. You normally pay someone to do some investigation first and they well you the likelihood of being even remotely considered. Or you can just pay and go in, and then get reviewed.

    Given our experiences to date, I find it contradictory if that one is allowed to be TM’d. If you search perth AND web, there’s 2 perth web design companies applying for similar.

  2. Simon Says:

    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.

  3. Cindy Prosser Says:

    Personally I don’t find that much different to trademarking colours. Both are more or less descriptive attributes & not branding.

  4. Ricky Onsman Says:

    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?

  5. Charles Smyth Says:

    As a law school drop-out, I can say that I don’t believe (I am not a Lawyer :))it will be approved, although with appeals, etc it could be drawn out.

    It certainly seems the objective of the company is to gain an unfair advantage over the phrase ‘Perth web design’. I wonder how long it will take before they start approaching competitors, such as you Miles, to get the words (only as an exact phrase, mind you) removed from your websites?

  6. Matt Price Says:

    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

  7. Oliver Wood Says:

    Miles,

    Yes we have placed a TM application. The fact we did it before Christmas was instigated by a competitor blatantly passing off as us in an attempt to take clients and goodwill, we have another such case and is in the hands of our more than capable legal team.

    Part and parcel of having a generic name, however it is frustrating when the clients in question get burnt, damaging the reputation of the web industry overall. Nobody wins, especially the client.

    Our goal is not market domination, it’s just to keep winning and retaining business and strengthen the reputation of the industry, which, as an outsider from the Perth market, appears to have taken a bashing in the past.

    Whether we get it approved is down to the IP lawyers skill and judgement. Nobody on here is an IP lawyer and time will tell.

    Why it is such a concern for everyone is bemusing to me, as from an SEO point of view, the phrase is not the best that can be used and as it’s nobody else’s name other than ours and maybe Perth Web’s.

    [removed other part of post, which was more directed to me, than a blog comment - Miles]

    Cheers Oliver Wood

  8. Helen Burgess Says:

    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.

  9. Franki Says:

    The current trend of using generic key phrases as a business (presuming for SEO) shits me to tears. If you use a generic phrase as your business name and someone is doing the dodgie on you, then bawahahahah :P

    I don’t need to call my business “SEO Perth” to dominate the search results for this sector. So all the other key phrase business names out there, you’re doing a disservice for your own business for very very little gains (from search) and a lot of confusions for yourself/business not to mention not standing out very well up against your peers – it’s all marketing/branding 101 stuff.

    That said, I hope and believe that IPAU do have much more common sense then to pass this through.

    Peace :)

  10. Dale Carter Says:

    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

  11. Miles Says:

    Thank you to everyone for your comments, and for your thoughts on the matter. I know it takes time to write a comment, and I thank you for your input.

    Thanks to Oliver as well for joining in the conversation. I am disheartened to hear someone was trying to pass off as you guys, that’s not a nice position to be in.

    This is an interesting situation, and I look forward to seeing it unfold, and reading further discussions on it here.

    Just remember people to stick to facts, and avoid any nasty behaviour (not that my readers are uneducated like that :)). Remember, comments are the property of their owners, and may not be the views of the publisher, in this case, me. :)

  12. Rohan Wallace Says:

    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.

  13. Singapore WebDesign Says:

    Thank you very much for sharing. Your information always proves to be useful. I think your post is suitable for everyone, who is interested in valuable resources . I will keep following your posts.

  14. James Says:

    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

  15. Miles Says:

    To answer the query about domain names, using publicly accessible WHOIS data, I have found the following domain names registered, as well as the registrant name;

    Perthwebdesign.com.au – Stuart Riddle
    Perthwebdesign.net.au – Studio Vee

    Perthwebdesign.com – Majestic Ventures Holdings Limited
    Perthwebdesign.net – Brett Robinson
    Perthwebdesign.org – Bam Creative
    Perthwebdesign.biz – Bam Creative
    Perthwebdesign.info – Bam Creative

    Perth-web-design.com 1iT
    Perth-web-design.net Craig Partridge
    Perth-web-design.org Oliver Wood
    Perth-web-design.biz GTP iCommerce Pty Ltd
    Perth-web-design.info Jenny schutte

    Sure seems half of Perth have domain names with the words perth, web and design in them.

  16. David Says:

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