In Short
- If another business is using your name, first check if they have a registered trade mark.
- The impact of another business using the same name depends on location and industry.
- Trade mark registration can still be possible, even if another business is already using the name.
Tips for Businesses
Before choosing a business name, search the Australian Business Register, ASIC, and the Trade Marks Register to avoid potential conflicts. Ensure your name is unique and not descriptive to increase your chances of successfully registering a trade mark. Consider international trade mark searches if planning to expand globally.
Table of Contents
Nothing is worse than finding out another brand is using your intended business name, especially after spending lots of time and money starting a business. Unfortunately, this is a common obstacle for new business owners to overcome. Discovering that someone else has already taken your business name is not the end for you. However, it is crucial to understand what options are available. This article will discuss what you can do if another business uses your name.
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Does the Other Business Have a Registered Trade Mark?
It would help if you first asked whether the other business has a registered trade mark in Australia. A registered trade mark gives the owner an exclusive right to use it for their goods and services. Therefore, using the mark without permission from the owner would likely be trade mark infringement.
Remember that registering your business or company name through the Australian Business Register or ASIC differs from trade mark registration. Registered business names and company names, however, do indicate whether the name is in use.
Are the Businesses Competitors?
Regarding business names, owners are usually concerned about whether someone in the same industry uses the same or similar name. If they provide the same goods or services, they will likely confuse consumers who may approach the wrong business.
If another business uses your chosen name and offers different goods or services, the owner is less likely to be concerned with you setting up a business with the same name.
Therefore, your name must be unique. It must make a memorable impression on consumers and set you apart from competing businesses.
Continue reading this article below the formWhere is Each Business Operating?
The location of each business is another essential factor. Australia has more than two million small businesses – primarily local small businesses. Although consumers can access businesses nationwide online, not all have a presence in more than one Australian state. For example, a local florist in Perth is unlikely to care if a florist in Bendigo has opened under the same name. However, if an online clothing store ships Australia-wide, this may create an issue with a retailer opening with the same name in Melbourne. Therefore, location can be essential in choosing the right name depending on your business’s needs and growth potential.
How Long Has Each Business Been Trading?
Answering this question will help you better understand your competition if you proceed with your chosen business name. Is the other business well-established and well-known? Even if the established business does not have a registered trade mark, it may have other unregistered rights to stop you from using the business name.
In these types of situations, there are two questions to ask:
- Will it bother you that someone else has the same business name?
- Will it bother you if the other business finds out you use the same name?
The answer to both questions would often be ‘yes’. It seems logical that business owners would not want another business to use their business name. The factors discussed above are helpful when deciding whether to proceed with using your business name.
Conduct Searches
Searching the Australian Business Register, ASIC and the Trade Marks Register (ATMOSS) before selecting a name is worth exploring. These searches do not always let you know whether the business is still active or using the name, so you should also do general searches.
International Expansion
If your business has plans for international expansion, it is crucial to extend your trade mark searches beyond Australia. Failing to do so may lead to significant challenges when registering your trade mark overseas. This is especially important if another entity has already secured rights to your intended business name in your target markets. Conduct thorough searches using official trade mark databases in critical countries to avoid this scenario. For example, search the United States Patent and Trademark Office database to expand to the United States of America. Alternatively, for the United Kingdom, search the UK Intellectual Property Office.
What Are Your Options?
If your business name has been taken and you decide you absolutely cannot change it, you have a couple of options. They are as follows:
- You can attempt to negotiate with the other business owner for the business’s name. This can depend on the business size and brand recognition level. However, if you catch a business in its infancy, it may be willing to sell you its existing trade mark and business name.
- You can register the trade mark. While the ‘prior use’ rule does leave your business open to opposition to the trade mark from the other business, there are exceptions. You can find more information on this below.
- You should register your domain name. Unlike trade marks, domain names are registered on a first-to-file basis. However, using a trade mark in a domain name can infringe on the trade mark owner’s rights. You can learn more about registering a domain name with our helpful article.
Register Your Trade Mark
If the other business has not registered the trade mark, you can do so. The other business, however, will have an opportunity to oppose your application. They may succeed if they can show that they have been using the trade mark before the date you filed the application (known as ‘prior use’).
Australia is considered a ‘prior use’ or ‘first to use’ country concerning trade mark ownership. However, this should not deter you from registering your trade mark if you choose to go ahead with the business name. To prove ‘prior use,’ a trader must establish they have been using the trade mark before the filing date of the conflicting trade mark application, that the trade mark has been used continuously, and that the use has occurred within Australia.
Key Takeaways
Your response to discovering that another business has your chosen name depends upon each business’s commercial activities and history. When starting a business, new owners face a hard decision. They can continue with their chosen name at the risk of opposition or change their name.
If you need assistance registering your business name or trade mark, 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
It is essential for the name you choose to be unique, as it needs to make a memorable impression on consumers and set you apart from competing businesses. To give yourself the best chance at obtaining exclusive rights to your name via trade mark registration, you should ensure the business name is not descriptive of the goods and services offered by your business. While names such as “Sydney Electricians” may seem appealing because they communicate what your business does, they present challenges when it comes time to register your trade mark. For example, you would not be able to register a trade mark for a business named “Healthy Organic Smoothies”, as this does not distinguish your business from other traders who sell the same goods.
A registered trade mark gives the owner an exclusive right to use it concerning their goods and services. Therefore, using the mark without permission from the owner would likely be considered trade mark infringement.
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