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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 can only occur through trade mark registration. This is different from simply operating your business under this registered business name. Trade mark registration can be a more expensive and lengthy investment but ultimately provides greater protection. This article will explain the levels of proprietary protection that registering and trade marking your business name provides. 

Registering Your Business Name

When first planning your business, you might think of a catchy and creative name that you wish to trade under. However, since this name is different to your own personal name, you must first register it with the Australian Government Business Registration Service. 

If you read the fine print, you might be surprised to notice that the Government will not guarantee other businesses are not currently trading under that name. Further, through registration, you will not 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. 

This means that you must seek other ways to provide proprietary protection for your business name.

Proprietary Protection Over Your Registered Business Name

Apart from trade mark registration, statutory and common law remedies can assist you if another company takes commercial advantage of your company name. It can be quite shocking to find another company giving the misleading impression that its company is your own. This is called ‘passing off’ and is a civil wrong in Australia.

To prove that another company is ‘passing off’ your company, you must be able to prove three things:

  1. you have a long-standing and strong reputation for the goods and services you provide in your area or region; 
  2. the other party is misleading consumers due to their misrepresentation; and 
  3. that this misrepresentation has impacted or is likely to impact your company or its reputation. 

Resolving such a dispute can be a time consuming and expensive process. For this reason, you should register a trade mark over your business name to ensure it is adequately protected. Trade marking your company name provides proprietary protection and an exclusive right to use the name.

Why Should You Trade Mark?

Registering a business name with the Australian Government Business Registration Service is relatively easy. On the other hand, trade marking is a more stringent and challenging process. The trade marking process can take between seven to nine months to complete. Likewise, there are specific eligibility criteria that you must satisfy to apply for a trade mark.

Regardless of how established your business name may already be, the first step is conducting (or having a trade mark lawyer conduct) a thorough search of the Trade Mark Register to check for conflicting names. 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 trade mark. Although, it is possible to request an expedited examination to speed up the process. If there is any potential for conflict, a trade mark examiner will further inquire about your application.

When applying for a trade mark, you must also consider the descriptiveness of the name you are applying for. Your trade mark application may be rejected if your business name is too descriptive. For example, it describes the goods or services you provide and the area you operate, like, Sydney Flower Shop. If your application is rejected for being too descriptive, you can provide evidence of use to IP Australia to counter this rejection.

Further, achieving trade mark protection gives you absolute exclusivity over the name or logo you wish to protect. With a registered trade mark, it is easier to maintain protection over your business name. You will also be able to enforce your rights against infringing users. This is a more protective alternative to appealing to the Trade Practices Act or common law with your fingers crossed. 

Will My Domain Name Protect My Business?

Having a domain name relevant to your business can help you appear higher in a Google search result without paying for advertising. Today, it would be naive to think that just because your business is, for example, a café, the Internet will not impact how successful your business becomes. Many businesses, including those that traditionally would have no connection to the Internet, feature elaborate and interactive websites. 

However, be aware that a competing business may deliberately, or perhaps innocently, create a brand and associated website similar to your business name.

In such a scenario, 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?

Using .au

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 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.

Luckily, certain dispute resolution procedures exist to assist you in resolving the matter to avoid such a scenario from occurring. 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 trade mark that is either confusingly similar or identical to the domain;
  • the other business must be using the domain in bad faith, that is, for an ulterior motive. For example, using the domain to intentionally block your business from having the opportunity to use it; and
  • the domain owner is not legitimately using the domain, meaning they have limited to no interest or right in the domain.

Unfortunately, even if you can satisfy all of these points and prove the other business is not using the domain appropriately, the other party may still be able to retain the domain.

Key Takeaways

There’s nothing worse than thinking of a catchy and creative business name, only to find another business using the same or similar name. To avoid possible legal disputes, it is best practice to register your domain name and apply for a trade mark. Trade marking provides further proprietary protection as it gives you exclusive rights to its use. It also allows you to enforce your rights against infringing users. For more information on how to provide greater proprietary protection to your business name, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

Do I need to register my business name?

When first planning your business, you might think of a catchy and creative name that you wish to trade under. However, since this name is different to your own personal name, you must first register it with the Australian Government Business Registration Service.

Why do I need to register for a trade mark?

It is not compulsory to register a trade mark for your business name or logo. However, it is best practice to secure more propriety protection against other businesses wishing to trade under your name or a similar version of your name. Trade marking gives you exclusive rights to use the name and allows you to enforce your rights against infringing users.

What is ‘passing off’?

Passing off is a situation when another business gives the misleading impression that its company is your own. Another business may be ‘passing off’ as your business by trading under a very similar name or using an almost-identical logo.

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