When developing a business, your business name can be what sets you apart from your competitors. As such, you may spend a lot of time, money and effort building a strong reputation in your name. 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 name as a trade mark, another party can register that name 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.

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

A business name is the name you conduct your business under. If you have registered your business name with ASIC, no one else can register the same business name with ASIC. However, it does not stop anyone using the name, even if they do not register it with ASIC. It also does not stop someone from registering that name or a similar name as a trade mark.

A trade mark is a sign which you use to represent your business. It could include a:

  • logo;
  • brand name;
  • slogan; or
  • product name.

A registered trade mark refers to a mark that has received approval from Intellectual Property (IP) Australia. These trade marks appear on a public register that IP Australia operates. A registered trade mark gives you the exclusive rights to use the mark in connection in your industry. Registering a business name with ASIC does not provide you with this same right. 

This means that if you could receive a claim from the registered trade mark holder alleging that you are infringing their trade mark rights. That said, if you used that business name before they registered their trade mark, you will have some options to stake your claim to that name.

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 has applied to register the mark, you will be able to lodge an opposition to the mark. Here, you will need to outline that you were using the name first and have continued to use it up until the other party applied for the trade mark. If you can show evidence of your use of the name, you will have a strong chance of stopping the trade mark from being registered.

However, if you do not oppose the mark during this time, the other party could register it. That said, if you have used the mark before the registered holder, they will not be able to stop you from using that mark, and you will have a defence available to you for an infringement claim.

Applying For Removal

If the other party has already registered the trade mark, you may still be able to challenge their rights to the mark. This involves applying to the court for the removal of the trade mark from the register on the basis that they are not the mark’s rightful owner.

This may require you to spend high costs to assert your rights to the trade mark. Therefore, you must conduct search the trade mark register before choosing a business name. If it is available, you should then apply to register your business name as a trade mark as soon as you can.

Another advantage of registering your business name as a trade mark is that it will appear on another public register. This will notify people that your name is taken when they are deciding on their brand name.

Key Takeaways

If you have invested considerable time and effort into building your brand, it could be disheartening to discover that someone has registered your business name as a trade mark. However, if you used that name before the other party, you will still have some grounds to challenge their registration. You should conduct regular checks of the trade marks register to ensure that no one is registering a similar name to your business. If you have any questions about your trade mark rights, or need assistance registering your IP, get in touch with LegalVision’s IP Lawyers on 1300 544 755 or fill out the form on this page.

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Charlotte Hale
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