How can I protect my business name?

I have opened a restaurant called Rimini Ristorante Caffe Pizzeria; the word Rimini is a city in the north of Italy near the sea. My restaurant is also near the sea, but there is also a Cafe Rimini about 30 kilometres away in the Adelaide hills.

They have advised me that they are now going to trademark the words Cafe Rimini and want us to remove the name Rimini from our company name.

I have found information that a geographic place can not be a trademark, and Rimini is a geographic place.

Our full company name is Rimini Ristorante Caffe Pizzeria Pty Ltd.       +

Can you please advise me on what I can do to protect my name?

In summary, my advice is to find a new name.

Although the costs of re-branding may appear prohibitive, the cost of lawyers is likely to be even more so. And you are likely to lose any legal case (assuming the other side has lawyers who know what they are doing).

The fact that you had started trading under your current name would, until recently, have provided you with a defence to a trademark infringement action by the Café Rimini owners, but changes to the TM Act a couple of years ago have removed this defence, if the Café Rimini owners started using the name first (under Section 58A of the Act).

Although in many cases a geographic name cannot be registered as a TM, this is only where it is likely that there will be confusion as to the source of the goods or services, or where other people in that area are likely to want to use the name to describe the source of their goods or services – for example, if you tried to register “Barossa” as a trademark for wine.

Of course, if you were the belligerent type, you could “oppose” the other side’s trademark application (see here), and this would spin things out for up to a couple of years, and you could probably generate some publicity from the stoush, and use this to generate more publicity if and when you change your name. But taking legal action as a “matter of principle” is always fraught with danger.

James Omond runs his own Melbourne-based commercial legal practice Omond & Co, specialising in the area of intellectual property (trademarks, copyright, etc). He is a registered trademarks attorney, and was the Australian Young Corporate Lawyer of the Year (back in 1999, when he was almost young). James also advises on a broad range of commercial matters, such as buying and selling businesses, partnerships and joint ventures, trade practices, advertising, marketing and promotion.