Someone Registered My Business Name Through ASIC – Is This Trade Mark Infringement?

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Table of Contents

• Business Names and Trade Marks
• Scope of Trade Mark Protection
• Goods and Services of the Other Party
• Key Takeaways
• Frequently Asked Questions

If someone has registered a business name that is the same or similar to your registered trade mark, this may or may not amount to trade mark infringement. Whether trade mark infringement occurs depends on several factors, such as whether the other party is using your business name as a trade mark (i.e. as a badge of origin), what goods and services they are offering, and whether these goods and services overlap with the items claimed in your trade mark registration. This article will discuss the difference between business names and trade marks and the factors above. Accordingly, it aims to provide you with a greater understanding of whether someone is infringing your trade mark rights.

Business Names and Trade Marks

It is important to note the difference between business name registration and trade mark registration. Registering a business name through ASIC allows you to trade under that name. However, there are no inherent rights to use that business name for your goods and services exclusively. On the other hand, trade mark registration grants the owner of the trade mark exclusive rights to use the applied-for sign or symbol, such as a business name, logo, or slogan, for the claimed goods and services.

Scope of Trade Mark Protection

If and when you have achieved registration, you will have exclusive rights to use your trade mark. Notably, this means that you would have the power to take action against another party that uses a substantially identical or deceptively similar trade mark for the same or similar goods and services.

Importantly, the goods and services need to be the same or similar for there to be a trade mark conflict. So, for example, if you have trade mark registration of the word GORILLA for clothing goods, another party’s use of the name GORILLA concerning car cleaning services is unlikely to be a conflict. Accordingly, it may be challenging to establish trade mark infringement.

Goods and Services of the Other Party

Suppose the only information you have of the other party is that they have registered a business name through ASIC. In that case, it can be challenging to determine what goods and services they will supply under the business name. A good tip is to conduct marketplace searches on the internet. For example, you can explore the other party’s website, social media accounts and articles mentioning the brand. You may also consider using the details available on ASIC to narrow down your search. This may include noting the state or territory and postcode where the entity was registered or the date it became active.

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Key Takeaways

It can be stressful when another party applies to register a business name that is the same or similar to your registered trade mark. However, it is essential to consider whether the other party is using the business name as a trade mark. Furthermore, you must determine whether it is in relation to the same or similar goods and services that your trade mark covers. From there, you will be able to determine whether the other party is infringing on your exclusive trade mark rights.

If you believe another party has infringed on your valuable brand, 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