Business owners with a registered business name often believe that they exclusively own the rights to use the name in question. In Australia, being the owner of a name, as opposed to simply operating your business under this registered business name, can only occur through trademark registration of the name – a more expensive and lengthy investment. Normally, the rules surrounding the naming of businesses are a state concern. If you want to trade under a name other than your own, you are required to register this name first. If you read the fine print when you register your business name, you might be surprised to notice that the State won’t guarantee other businesses are not currently trading under that name, and further, that through registration, you won’t benefit from any ownership of the name itself.
Unfortunately, the registration of company names provides a similarly limited proprietary interest. Since so many companies were operating under the same or similar names, the Federal authorities began distinguishing the companies by number (ACN), rather than by name.
So what protection does this leave you with over the name of your business?
Apart from trademark registration, there are statutory and common law remedies that can assist you if another company is taking commercial advantage of your company name (i.e. giving the misleading impression that its company is your own). This is called ‘passing off’ and is considered a civil wrong in Australia.
Resolving such a dispute can be a time and money-consuming process, and for this reason, it is advisable that you register a trademark over the name to ensure your company name is adequately protected.
What of trademarking?
While the registration of business or company names is relatively easy to have accepted, trademarking is more difficult and stringent in its eligibility criteria. Regardless of how established your business name may already be, the first step is conducting, or having a trademark lawyer conduct, a thorough search of the Trademark Register to check for conflicting names. Then, even if there is no potential conflict, you may have to wait up to 13 weeks before an examiner can even consider your application to register a trademark. Having said that, it is possible to request an expedited examination to speed up the process. If there is any potential for conflict, a trademark examiner will further inquire about your application.
Achieving trademark protection gives you absolute exclusivity over the name or logo you’re wishing to protect. Instead of appealing to the Trade Practices Act or common law with your fingers crossed, with a registered trademark it is easier to maintain protection over your business name and enforce your rights against infringing users.
Will my domain name protect my business?
Having a domain name that is relevant to your business can help you appear higher in a Google search result without paying for advertising.
In today’s day and age it would be naive to think that just because your business is, for example, a café, that the Internet won’t have an impact on how successful your business becomes. Nowadays, many businesses, including those that traditionally would have no connection to the Internet, feature elaborate and interactive websites. You should ask yourself: Have you developed a plan for dealing with another business that starts trading under the same name? What is the best course of action if this happens?
Use of the .au suffix in Australia is only permitted when a business operates (is registered) under the same name as the .au domain. The problem arises when another person, operating under the same business name, but in a totally different industry, seeks to register the .au domain. This other company may be entitled to do so because they are also registered under the same name, which qualifies them to use the .au suffix.
To avoid such a scenario from occurring, certain dispute resolution procedures exist to assist you in resolving the matter. However, to benefit from these processes, you must first prove the following to have a chance of using the domain:
- You need to have a trademark that is either confusingly similar or identical to the domain;
- The domain being used by the other business must be using the domain in bad faith i.e. for an ulterior motive, such as intentionally blocking your business from having the opportunity to use it; and
- The domain owner is not legitimately using the domain, i.e. has limited to no interest/right in the domain.
Unfortunately, even if you are able to satisfy all of these points and prove the domain is not being used appropriately, the other party may still be able to retain the domain.
It may be the case that once a domain is snatched up by another business, it becomes theirs to do as they please. While it is possible to have grounds to redeem the unique domain, it is more likely that you will have to purchase it from the owner instead. If you believe you are entitled to a domain name that has been purchased by a competitor or another business in bad faith, you should seek the advice of an IP lawyer to get a better understanding of your legal standing.
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