What Should I Do if Someone Registers My Business Name as a Trade Mark?

In Short

• Registering a business name with ASIC does not provide exclusive rights like a trade mark does.
• You can oppose a trade mark if you’ve used the name before the registration.
• Trade mark registration offers stronger protection for your business name.

Tips for Businesses

Always conduct a trade mark search before choosing a business name. Registering your business name as a trade mark protects it from being used by others. If you face issues with someone registering your name, seek legal advice to oppose or challenge the trade mark.

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Table of Contents

• What Are the Differences Between a Business Name and a Trade Mark?
• Opposing the Trade Mark
• Applying for Removal
• Key Takeaways
• Frequently Asked Questions

In Australia’s competitive business landscape, your business name is a crucial asset that sets you apart from your competitors. You may invest significant time, resources and effort into building a strong reputation using this name. However, it is a common misconception that registering your business name with the Australian Securities and Investments Commission (ASIC) provides you with exclusive rights to use that name. If you have not registered your business or trading name as a trade mark, another party can register it as a trade mark for their business. This article will explain what you can do if someone registers your business name as a trade mark before you.

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What Are the Differences Between a Business Name and a Trade Mark?

A business name is an official title under which a company or organisation is known in the marketplace and conducts activities. Registering your business name with ASIC prevents others from registering under an identical name. However, it does not stop anyone from using the name in the marketplace, even if they do not register it with ASIC. Importantly, ASIC registration does not prevent others from registering your business name (or a similar name) as a trade mark. 

A trade mark is a sign that represents your business. It may include:

• logos;
• brand names;
• slogans; or
• product names.

IP Australia examines trade mark applications, which appear on a public register if approved. A registered trade mark grants you exclusive rights to use the mark in connection with your specified goods and services.

Without trade mark registration for your business name, you may receive a claim from the registered trade mark holder alleging that you are infringing on their trade mark rights. However, if you used the business name before the trade mark’s registration, you may have options to defend your right to use it.

Opposing the Trade Mark

When someone applies to register a trade mark, there is a two-month period where another party can oppose its registration. If you become aware that someone is applying to register a trade mark that is the same as your business name, you can lodge an opposition. In your opposition, you must outline that you were using the name first and continued using it until the period in which the other party applied. If you can provide extensive evidence of your use of the name before their trade mark application filing date, you may have a strong chance of stopping the trade mark from being registered. 

If you fail to oppose the trade mark during the opposition period, the other party’s application may proceed to registration. However, if you have used the trade mark before the registered holder, they are unlikely to prevent you from continuing to use it. In this case, you can rely on your prior continuous use as a defence against any infringement claim.

Applying for Removal

Even after another party successfully registers the trade mark, you may still be able to challenge their right to use it. This process involves applying to the court to remove the trade mark from the register because they are not the rightful owner.

This sort of legal action can incur significant costs. To avoid this situation, we recommend:

1. Conducting a thorough search of the trade mark register before choosing a business name; and
2. If available, apply to register your business name as a trade mark as soon as possible.

Registering your business name as a trade mark offers an additional benefit by appearing on a public register, as it alerts other parties that they cannot use your name for their brand.

Key Takeaways

Discovering that someone has registered your business name as a trade mark can be disheartening, especially after investing significant time and effort into your brand. However, if you used the name before the other party, you may have grounds to challenge their registration. To protect your brand, conduct regular checks of IP Australia’s trade marks register to ensure no one is registering a trade mark similar to your business name.

If you need assistance registering your business name as a trade mark, our experienced trade mark 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