Mistakes To Avoid When Registering Your Company Name As A Trade Mark

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Table of Contents

• Different Registrations
• Common Names
• Forgetting to Search the Trade Marks Register
• Applying For Protection Under The Wrong Classes
• Key Takeaways
• Frequently Asked Questions

As a business owner, you can enjoy many benefits from registering your company name as a trade mark. Namely, trade mark registration gives you the exclusive right to use, license and sell your mark. Therefore, you can:

• prevent others from using a similar or identical name concerning similar goods and services that your company offers;
• build your company’s brand to the exclusion of others in the market; and
• increase your company’s value by protecting your intellectual property (IP).

Although there are benefits to trade mark registration, there are some mistakes you should avoid to increase the likelihood of IP Australia accepting your application. This article will discuss some mistakes to avoid when registering a trade mark.

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Different Registrations

The difference between a business name and trade mark registration can be confusing. When you registered your company name with the Australian Securities and Investments Commission (ASIC), this was a legal obligation you had to undertake to run your business.

Once you register your production company name, another company cannot register under the same name. This is because company names are necessary to ensure the public can easily differentiate your business from others. 

In saying that, business name registration does not give you the exclusive right to use your company name when marketing your goods and services. Instead, you must register your trade mark to obtain the exclusive right to use your company name. A trade mark is any sign you use to distinguish your goods and services from other companies. In this sense, trade mark registration can protect the features of your company’s brand, including your: 

• company name; 
• logo; or 
• slogan.

Common Names

Essentially, a trade mark must distinguish your company from another. Consequently, IP Australia is unlikely to accept an application for a trade mark that lacks distinctiveness. It would help if you were wary of applying for common names when registering a company name. For example, common surnames like ‘Smith’ and ‘Jones’ or common first names like ‘Harry’ or ‘David’, may be more difficult to register.

You may also encounter difficulties if you want to file a trade mark that combines a common name and the goods and services your company provides. 

Whether a name is ‘common’ can depend on how many times it appears on the Australian electoral roll. For example, IP Australia recently rejected a trade mark application because the name ‘Barton’ was sufficiently common. At the time of their decision, the name appeared on the electoral roll 5100 times. As a general rule of thumb, if the name appears less than 750 times on the Australian electoral roll, it should not pose any issues regarding distinctiveness.

Forgetting to Search the Trade Marks Register

Before you apply to register your trade mark, you should search the Australian Trade Marks Search. This is because if you try to apply for a trade mark that is similar or identical to an existing trade mark, IP Australia may not accept your application.

So, what is the point of searching the Trade Marks Register if ASIC will not register an identical company name to a company that already exists? Whilst it is true that ASIC will not register two identical company names, this does not necessarily mean that someone has already registered your company name as a trade mark. Sometimes, business owners decide to register a trade mark before launching their business. For this reason, you must search the Register to minimise the risk of IP Australia rejecting your application.

Applying For Protection Under The Wrong Classes

When you apply for trade mark registration, you must notify IP Australia which goods and services you wish your trade mark to protect. Many applicants use the trade mark picklist, which groups common goods and services into 45 different classes. When using the picklist, you will find that classes 1 to 34 contain goods and classes 35 to 45 contain services.

Applying for as many classes as possible may be tempting to ensure you gain extensive trade mark protection. However, this can lead to unnecessary costs and further complications. Instead, you should only apply for the classes relevant to your company’s goods and services, noting that many goods and services fall under more than one class.

You should also note that once you file your application with IP Australia, you cannot add any classes to your application. Instead, you can only remove classes that you included. Therefore, if you forgot to include a class integral to your application, you would likely have to reapply to IP Australia at an additional cost. Therefore, it would be wise to seek advice from an experienced trade mark lawyer who can help you select the appropriate classes. This way, you can maximise your trade mark protection.

Key Takeaways

Before you register your company name as a trade mark, you should:

• note that trade mark registration is not a legal requirement but can grant you additional IP protection; 
• avoid applying for common names;
• search the Australian Trade Marks Search to avoid applying for a similar or identical trade mark; and 
• apply for trade mark classes that will protect your business’s goods and services.

If you have further questions about registering your 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