Legal Considerations for Registering a Personal Name as a Trade Mark

In Short

• Registering your name as a trade mark can protect your brand, especially in the creator economy and against AI misuse.
• Trade mark protection applies only to specific classes of goods and services—choose carefully to cover your business activities.
• Common or famous names are harder to register; your name must be distinctive and defensible.

Tips for Businesses

If your name underpins your online brand, consider trade mark registration early. Select the right classes to match your business, and avoid generic or common names. Registering through a company, rather than as an individual, can make future licensing, expansion, or restructuring more cost-effective and commercially sound.

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Table of Contents

• Legal Considerations
• Famous Names
• Should I Personally Own the Trade Mark?
• Will I Encounter Issues if I Register My Name As a Trade Mark?
• Key Takeaways
• Frequently Asked Questions

If you have a successful online business or online persona, registering your name as a trade mark may allow you to gain exclusive rights to the name and ensure that no one else copies you. This may be the case if you use your name on a YouTube channel or as a social media influencer, or within the broader creator economy, which has become a significant force in Australia. 

The rise of sophisticated AI tools also introduces new legal complexities. Creators must now consider the risk of their name or likeness being used without consent to train AI or generate deepfakes. Securing a trade mark can provide a vital legal tool to combat this unauthorised use and protect your brand identity. This article sets out the legal considerations for registering your own name as a trade mark. 

Legal Considerations

A trade mark protects the goods and services that make up your business. A trade mark is a unique sign that helps to identify your business and your branding. You may want to consider whether:

• your name sufficiently identifies and distinguishes the goods and services that you provide; and
• registering your name as a trade mark will help your customers or clients to identify your branding.

Before applying for a trade mark, it is essential to understand that trade mark protection is limited to specific classes of goods and services, which are divided into 45 classes. Your trade mark will only protect your name within the classes and goods/services you select and pay for. For example, if you register your name for cosmetic products in class 3, this will not prevent someone from registering a similar name in class 41 for education services. Carefully selecting classes is crucial for safeguarding your name.

As already mentioned, the ability to register your name as a trade mark depends on whether your ‘mark’ is capable of distinguishing your goods and services compared to other traders. Another key consideration when registering your name as a trade mark is the commonality of your name. Many individuals may have your first or last name, and many people often share the same surname. You cannot register a common name, such as John Smith. You may have a better chance of success if your name is not common. The need for your trade mark to be distinctive and defensible is crucial.

For example, it would be challenging to trade mark ‘John Smith’s Flowers Shop’. This is because the name John Smith is quite common, and John Smith’s Flower Shop is too descriptive of the goods and services John will provide.

Famous Names

You will also encounter difficulties registering your name as a trade mark where you share the same or a similar name as a famous person. A recent court decision highlights a greater focus on how a brand is perceived by the public, underscoring that a celebrity’s reputation can sometimes override a local registration, raising new challenges for trade mark certainty. 

For example, Rihanna is a renowned artist and actress. Rihanna has protected: 

• her name, ‘Rihanna’;
• her brand, ‘Fenty by Rihanna’; and
• several other variations of her name. 

Although Rihanna’s full name is Robyn Rihanna Fenty, she is commonly known to the public as Rihanna. Her trade marks are mostly in association with her Fenty beauty brand and her perfumes, apparel and sunglasses. If your name were Rihanna and you wanted to establish a namesake apparel brand, IP Australia would be unlikely to approve your application for the trade mark ‘Rihanna’. This is because it could easily confuse or deceive the public.

Should I Personally Own the Trade Mark?

If you are a sole trader, you would likely register the trade mark in your name. This means that you would be the registered owner as an individual. However, if you seek registration through your company or other legal entity, the legal entity would own the intellectual property rights. A trade mark is an important commercial asset. Therefore, having your mark associated with an existing business will make your business appear more legitimate and professional.

One benefit of your business owning the trade mark is that people will associate the reputation and goodwill of your goods and services with your business. If you have a legal entity that owns the trade mark, such as a company or holding company, you would also be in a better position to assign or license your mark to other entities. This provides a valuable commercial opportunity to expand your business. 

Another consideration is how you will deal with the ownership of your trade mark if you decide to restructure your business. 

For example, you might decide to incorporate a company or set up a family trust. 

It can be a costly process to either: 

• transfer ownership of the trade mark from your name to the new entity; or 
• re-file the trade mark in the name of the new entity. 

Will I Encounter Issues if I Register My Name As a Trade Mark?

If you decide to leave the business down the line, you could encounter potential trade mark infringement issues in relation to your own name. This could happen if you decide to establish another brand with the same name. 

For example, imagine you: 

• have owned an accounting firm for the past six years; and 
• have a registered trade mark in the relevant services. 

Now imagine that you want to leave the accounting firm and establish a new marketing firm with the same name. If you start trading with the same name, you may face several issues.

For example:

• you may confuse your clients, who think you own both firms; and
• your old colleagues at the accounting firm may have a claim in misleading and deceptive conduct or passing off.

Trade Mark Essentials

This guide explains the essentials of trade marks and the steps required to register a trade mark.

Download Now

Key Takeaways

Your trade mark is a commercial asset, so it is vital that you are aware of your legal responsibilities. Having your name as a trade mark gives you exclusive rights to use the mark. However, there are a few questions that you should consider before filing for registration as a trade mark. You should consider:

• whether your trade mark sufficiently distinguishes your goods and services from other traders;
• what will happen when you decide to transfer your trade mark to another person or business; and
• how you will protect yourself from legal liability if you want to move away to a new business. 

Remember, IP Australia is unlikely to accept a trade mark that is too generic or descriptive of the goods and services you provide. If you are unsure whether your trade mark will meet IP Australia’s requirements, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions