Small Perth store takes on UK’s Topshop in name battle – what SMEs can learn

A fashion retailer in Perth is battling it out with UK retail giant Arcadia Group, ahead of the expected launch of the UK Topshop brand in the city, Fairfax reports.

The retailer, Robyn Swayn, owns a business called Topshop Fashions, and reportedly has an application against the fast-fashion empire to prevent them from trademarking the name in Perth.

“I’ve got a valid application against them at the moment because I actually run Topshop Fashions, which is a retail ladies clothing store, and it’s been trading in Perth for 36 years under Topshop Fashions,” she told Fairfax.

Swayn is reportedly seeking compensation for the impact the name similarity will have on her business. She wants compensation to facilitate a name change, such as new signage and advertising, as well as compensation for the goodwill to change her business name.

The issue of name trademarks is common, but one which SMEs can caution against or fight if necessary. Patent attorney John Carroll of Callinans told SmartCompany this morning that if you are establishing a new business, you should check the trademark registrations and applications in the jurisdiction.

“Check ASIC for records of companies and business names…but remember that the existence of a name does not create the right to own it, it is about how it is used,” he says.

Carroll says geography plays a huge part in trademark cases, particularly if a business is coming into your area with a similar name.

“If the company comes into your jurisdiction, you will need at least some reputation (to fight it)”, he says.

Carroll says in the case of Topshop Fashions, the fact that the business name has existed for 36 years will play a key part in demonstrating reputation.

“The issue is now even more complicated by the internet, as companies in the UK may wish to sell to Australia, and in doing so, may sell products or a brand that is trademarked in Australia.”

He says if a company does come into your area, and wants you to change your name, you can seek compensation for the act of goodwill in changing it.

Other notable trademark battles include the young Sydney fashion designer Katie Perry, who faced a battle from pop star Katy Perry over the use of the similar name, while a small business won the right to apply for a trademark containing the letter “i” against technology giant Apple, which fiercely protects its trademark.