Trademark battle continues between the two Guns For Hire despite IP Australia ruling

Perth

The battle between two marketing firms named Guns for Hire is set to continue, with the Sydney agency continuing to operate under the name despite the Perth agency winning the trade mark.

Stephanie Fletcher, managing director and creative at the Perth firm, lodged a trade mark application for Guns for Hire after another agency with the same name had a high profile launch event in Sydney two years ago.

The Sydney firm owned and operated by Michael Field, opposed Fletcher’s trade mark application for Guns for Hire for services in media representation, marketing and publicity, and claims his business has been operating for longer.

However IP Australia has now awarded Fletcher’s firm the trade mark for the name and URLS gunsforhiremedia.com.au and gunsforhire.com.au following a hearing in Canberra.

Yet Field’s firm continues to operate under the same name with the website gunsforhire.com.

Sydney

Fletcher argues her agency had been operating for two years when Field launched his business at an event in Sydney in September 2011 and that Field was well aware of the existence of the branding and business model of the Perth based Guns for Hire, and he acknowledged this fact in email correspondence in April 2010.

Field claims he registered his business in August 2008 and has held the domain name since 2003, but did not apply for the trade mark until it was contested in 2011.

However the Federal Court ruled: “Even when considered as a whole and in the most favourable light, I am not able to be satisfied that the opponent’s [Field’s] trade mark had, before the priority date, acquired a reputation in Australia, and because of that reputation the use of the opponent’s trade mark would be likely to deceive or cause confusion.”

As the court ruled Fletcher owned the trade mark, her lawyers sent a cease and desist letter to Field, which he claims not to have received, maintaining he has not been ordered to stop operating under the name Guns For Hire.

He said: “It’s an ongoing matter, it has not been concluded, and the fact that a trade mark has been awarded we still have a pending application with IP Australia and we have never received a cease and desist claim.”

However Fletcher said she is determined to protect her company’s operating space, adding: “I can’t emphasise enough the importance of protecting your intellectual property and registering a trade mark for your brand before problems arise; you never know what surprises might pop up in the future. Better safe than sorry.”