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Creating a business can be a stressful but ultimately rewarding experience. However, sometimes your business partners or colleagues may have plans of their own to steal your intellectual property. This article will look at what you can do to assert ownership of your business name if a colleague stole it, and prevent others from stealing it.

Is a Business Name a Trade Mark?

A trade mark is any sign that you use to distinguish your goods and services from those other businesses. A ‘sign’ could be your business or product name, logo, slogan, icon, colour, shape, scent or even a sound (sometimes even a combination of these things). For most businesses, a trade mark will come in the form of a name or logo.

You do not need to register a trade mark to have one. In fact, you may be able to argue that your business name is a common law ‘unregistered’ trade mark. This just means that the trade mark exists because you have been using a particular sign as a badge of origin. However, if you allege unauthorised use of this mark, you will have the burden of demonstrating that the required reputation in this common law trade mark exists in the first place.

Registering your business name as a trade mark will empower you to allege infringement based on a registered trade mark. This means that the alleged infringer will bear the burden of defending your infringement claim.

What Should I Do?

When it comes to business names and trade marks, the rightful owner is the person or entity who uses it first. If you are certain that you originated the business name and have evidence to support your claim, you should apply for a trade mark as soon as possible. Remember that a business or company name registered with ASIC is not the same as a registered trade mark. A registered trade mark entitles you to be the sole user of a particular sign concerning certain goods and services included in the registration. It also provides you with a defence to trade mark infringement if another party alleges that your trade mark is similar to their registered mark.

File a Trade Mark

Filing a trade mark with IP Australia is the best way to protect your business name. When filing for a trade mark, you must select a class of goods or services that you will use the trade mark in relation to. For example, class 9 covers software, electronic publications, wearable electronic devices, etc. It is important to get the list of goods and services right when filing because you cannot add classes later on.

For example, if you have a trade mark registered in relation to class 25 (clothing), you will not be able to expand protection to class 9 (software).

Furthermore, an inaccurate list of goods and services leaves you vulnerable to a third party using the mark concerning goods and services not covered by your registration. They could file an application for an identical mark concerning those goods and services, effectively blocking you from protection.

Non-Use Considerations

If you are concerned about a colleague stealing your business name, this already suggests a tense relationship that may lead to a formal dispute. You do not want to leave yourself vulnerable to, among other things, a non-use cancellation against your trade mark. 

A non-use cancellation is a request that you can file against a registered trade mark that has not been used for a certain period of time (at least three years from the date of filing) or that you had no intention to use at the time of filing concerning the goods and services claimed. This is why filing inaccurate goods and services is a problem, as you must use a trade mark concerning all of the goods and services claimed to maintain its validity.

Proving Infringement

Once you are certain that you have trade mark protection in place with a registered trade mark, you can consider taking action against your colleague. In some cases, a cease and desist letter will be sufficient to stop your colleague from using your trade mark. If the matter escalates to a formal opposition, however, you may need to demonstrate that: 

  • you own the registered trade mark; and 
  • the third party used your trade mark without your consent. 

As stated above, having a registered trade mark will strengthen your position relative to your colleague if they try to claim that you are not the rightful owner of the trade mark.

Key Takeaways

Securing trade mark protection is the first step for preventing your colleagues from stealing your business name. Once secured, you should consider getting legal advice to determine if there are any additional steps to take to prevent your colleague from using your business name. If a cease and desist letter does not stop them from using your trade mark, you may need to initiate formal proceedings to prevent them from making money off your trade mark. If you need assistance with protecting your business name, get in touch with LegalVision’s intellectual property lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

What is the best way to protect my business name?

Filing a registered trade mark is the best way to protect your business name, as it will give you exclusive rights and protections.

What happens if I do not use my trade mark?

If you do not use your trade mark for a certain period of time, a third party may seek to cancel it for non-use.

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