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Fwd: Computerbank - Company Names
Hi folks: here is the reply from Clayton Utz.
8-)
---------- Forwarded Message ----------
Subject: Computerbank - Company Names
Date: Tue, 12 Sep 2000 16:18:34 +1100
From: "Westcott, Andrew" <awestcott@claytonutz.com>
Dear Patricia
We refer to your e-mail addressed to Michael Morley of our office dated 7
September 2000. Michael is currently on leave. You asked what claim you
have to the name Computerbank in light of the registration of Computerbank
Pty Ltd ("CPL"). This question raises two issues. First, can you get CPL
off the register of company names and get on it yourselves? Secondly, under
what circumstances can CPL and Computerbank Victoria Inc. ("CVI")
respectively use the name?
Registration of the Name
As you will be aware, proprietary limited companies are registered by the
Australian Securities and Investments Commission ("ASIC") and incorporated
associations in Victoria are registered by Consumer and Business Affairs
Victoria ("CBAV").
Both ASIC and CBAV can register names similar to names already registered by
themselves or each other.
ASIC is not obliged to consider names registered by CBAV. In practice, this
means that your prior registration of an incorporated association called
Computerbank Victoria Inc. with CBAV does not prevent ASIC from registering
the company name Computerbank Pty Ltd to somebody else. This ASIC has done.
By the same token, the registration of the name Computerbank Pty Ltd with
ASIC does not prevent you from registering a company with ASIC under a
similar name, such as Computerbank Australia Pty Ltd.
CBAV, on the other hand, is obliged not to register an incorporated
association under the same name as a company registered by ASIC. This means
that CVI could probably change its name, for example, to Computerbank
Australia Inc. but not Computerbank Inc.
You might consider registering CVI as a registered Australian body under
Part 5B.2 of the Corporations Law. Doing so would give you protection
around Australia for the name Computerbank Victoria Inc. (in the sense that
the name would have national recognition), but it would not mean that you
would then be abe to procure the deregistration of CPL or to procure that
ASIC force a name change on CPL. If you were minded to take this course but
adopt a more nationally focussed name (for example Computerbank Australia
Inc.), it would be more efficient to change the name first. This is because
if you change the name with CBAV after registration under Part 5B.2 you will
then have to notify ASIC of the change.
Use of the Name
Where a person has established "goodwill" or a reputation for supplying
goods or services, it is wrongful (even unintentionally) for another person
to mislead the public to believe that goods or services which that other
person supplies are the goods or services of the first person. Such conduct
is known as "passing off". A party may be liable for passing off even if it
is supplying goods or services under its own registered name, provided that
a similar name is used to distinguish the goods or services of another in
the marketplace.
If two parties have similar registered names, then the first one to
establish goodwill in a marketplace will have priority to the name. When
the other party supplies goods and services under a similar name, and
consumers would be likely to mistake its goods or services for those of the
party with the goodwill, it is wrongfully passing off its goods.
The above principle also applies to protect the reputation of a non-trading
and charitable institution. Accordingly, if you have goodwill in a
marketplace and CPL passes its goods or services off as yours, you can bring
court proceedings for damages. Also, consumer protection legislation
prohibits misleading or deceptive conduct "in trade or commerce". If
consumers would be misled to believe that goods or services supplied by CPL
are yours, you may be able to bring proceedings for a range of remedies.
Conclusions
A challenge to the registration of the name Computerbank Pty Ltd is unlikely
to succeed. However, subject to the next paragraph, if you register CVI as
a registered Australian body, you will be able to use its name (as
registered) throughout Australia.
It is wrongful to pass goods or services off as those of another party or to
engage in misleading or deceptive conduct in trade or commerce. If CPL is
doing so, you may be able to bring proceedings to stop it or for damages.
Alternatively, if you are doing this, you may risk similar proceedings
yourselves.
You should therefore ascertain:
* what sort of activities CPL is engaged in; and
* the location of CPL's activities.
If there is a significant risk of public confusion over the use of the two
names it is likely that the first to have established a significant
reputation in the relevant market will ultimately prevail.
Should you have further queries, please let us know.
Regards
Chris Davie / Andrew Westcott
Partner / Articled Clerk
CLAYTON UTZ
-----Original Message-----
From: Sichlau, Caroline On Behalf Of Morley, Michael
Sent: Friday, 8 September 2000 9:48
To: Westcott, Andrew
Subject: FW: Assistance Request
-----Original Message-----
From: Patricia Fraser <trish@thefrasers.org> at melinternet
Sent: Thursday, 7 September 2000 9:41
To: Morley, Michael
Subject: Assistance Request
Hello Michael,
Although CU has more or les completed a lovely lot of work for
Computerbank, we have one last query for you.
We have discovered that a company has been incorporated in WA under the
name Computerbank Pty Ltd. We were wondering what issues this will raise
for us in using our name nationally; the Perth mob who work closely with
us are called Computer Angels, but the NSW and Qld and SA people want to
use the name Computerbank, and we're sort of hoping to become a national
organisation.
Sine we incorporated in 99 and this lot appear to have incorporated in
2000, do we have any claim over the name, or are we only able to claim
it in Victoria?
Let me know what other information you need?
Cheers,
Patricia.
---------------------------------------
Trish Fraser, Sunbury, Australia
trish@thefrasers.org
http://www.computerbank.org.au/victoria
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Trish Fraser, Sunbury, Australia
trish@thefrasers.org
www.computerbank.org.au
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ComputerBank Australia -- http://www.computerbank.org.au/