What’s in a Name? The Difference between Business Names and Trade Marks

Business & Company 7/02/2020 by Felicity Donald

You are setting up a new business and getting excited about its upcoming launch. Or perhaps you have been in business for a while and want to know more about protecting your business’ reputation and profits.

You have registered your chosen Business Name on the Australian Business Register and reserved a domain name for your website.

Protecting the name and branding of your business is important and could be critical to the success of your business – you want to make sure it is protected and your customers can find you.

You also want to limit the risk of competitors attempting to have a ‘free ride’ on the goodwill and reputation of your business.

When do I need a Business Name?

In Australia, a business can trade under the legal name of its owner, be that an individual, partnership or company, without having to register a Business Name.

However, if you wish to use a name other than the legal owner’s name for your business, it is a legal requirement that you register your chosen Business Name.

Is a registered Business Name or domain name enough?

The short answer is probably not.

Having a registered Business Name does not give you any intellectual property rights in that name, as such. Registering a Business Name is about identifying the legal owner of the business. Owning a registered Business Name will not prevent other people from using the same or a similar name.

Likewise, having a domain name is probably not enough. Usually a domain name will be based upon the Business Name. Like a Business Name, a domain name secures a unique website address for you but does not give intellectual property rights as such.

Something more is needed to protect your products and services in the marketplace, and to deter any competitors from benefiting from your reputation and branding.

What is a Trade Mark?

A Trade Mark is a sign used (or intended to be used) to distinguish the goods and services of your business from those of another business or person.

A Trade Mark could be your logo, Business Name, picture or jingle. Words, phrases, numbers, and even sounds, smells and movement can be a Trade Mark.

Your Trade Mark is what you use to identify your products and services and show your customers who you are.

I have a Trade Mark. Can I register it?

There are a few requirements that must be met for a trade mark to be registrable.

These include that the trade mark:

  1. is a sign used, or intended to be used, to distinguish goods or services in trade from those of others,
  2. is inherently capable of distinguishing the goods or services from those of others,
  3. is not ‘substantially identical with, or deceptively similar to’ another registered trade mark or a pending trade mark that has an earlier priority date, and
  4. is not, when used, ‘likely to deceive or cause confusion.’

It is important to consider these requirements before registering a Trade Mark. In addition, searches of existing Trade Marks may be carried out, so as to identify any issues that might potentially arise. Any issues can then be addressed early, thus reducing the risk of incurring unnecessary costs after an application is lodged.

Do I need to register my Trade Mark?

Registering a Trade Mark is a choice, not a legal requirement.

There are significant benefits of registering a Trade Mark. Perhaps most importantly, it gives you the exclusive right to use, licence and sell the Trade Mark.

Once you have a registered Trade Mark, you can protect your business from any unauthorised use of your Trade Mark throughout Australia. You may also prevent someone else from using a Trade Mark that is substantially the same or deceptively similar to your registered Trade Mark. Remedies for an infringement of your Trade Mark may include obtaining an injunction, claiming damages or seeking an account of profits.

Registering your Trade Mark also means it becomes available on a searchable public register through IP Australia. Prudent people considering using or registering a Trade Mark may search the register for clashes. Having your Trade Mark on the register may therefore reduce the risk of others inadvertently choosing to use the same or a deceptively similar Trade Mark in the marketplace.

If you choose not to register your Trade Mark, someone else may use the same or a deceptively similar Trade Mark in a way which confuses customers and causes detriment to your business. Having a registered Trade Mark makes it easier to enforce your rights against such a competitor without needing to prove all the aspects of a claim in passing off or misleading and deceptive conduct.

How can we help?

Protecting the name and branding of your business is important and could be critical to the success of your business.

Roberts Legal can assist you with advising on whether your Trade Mark can be registered, filing a Trade Mark application on your behalf, and providing you with expert advice on how best to protect the intellectual property assets of your business.

If you would like specific advice about your situation or assistance with your business needs, please call and speak to one of our experienced Intellectual Property Lawyers at Roberts Legal. You can reach us on 1300 553 343 or hello@robertslegal.com.au.

By Felicity Donald

«

»