What should you do if your former employee has taken your business name or your brand name and has registered it as a trademark in their own name? First, you should let them know that they’re not allowed to do that. That’s called a bad faith trademark registration or application. There is a process that you can follow to get that trademark removed, this is one of the few processes that you don’t need to go to court for.
If you’re in Australia, you can go to the Intellectual Property Office of Australia, so you don’t need to go to court in Australia to do this. New Zealand’s the same, you can do it through the IP Office. In fact, for most countries you can follow this process through the intellectual property office based in that country and doing this is much cheaper than going to court. Then you would need to show your business name and proof that the person had worked for you and that they’ve now got your name registered as a trademark, and you’ve asked them to transfer it back to you and they have refused.
So it’s a pretty simple, straightforward process, they are not allowed to get it registered. Although there’s no checks, so an employee could get it registered, it’s not actually a valid registration. You can challenge it quite easily and it’s not gonna cost you too much money in that specific situation. You can do it yourself or you could get a lawyer to do it for you. If you do get a lawyer make sure that they are an IP lawyer, or trademark lawyer who is familiar with trademark disputes.
It should be pretty simple to get resolved and I would imagine that once you show your former employee what the law says, they would probably give it up quite soon and maybe even transfer that trademark over to you. So, they’re not allowed to do that, it’s an application filed in bad faith because they knew that it was your trademark and they didn’t have any right to register it. It’s a different situation if a stranger comes along and files a name that is yours, or a name that you think is yours, or one that you’ve used before. That’s a different situation, because they’ve got no obligation to you and they can do that. My name is Cathryn Warburton and I am the Legal Lioness.