You have invested a lot of time and effort in selecting a business name and crafting your image. So how do you claim your place in the market, and stop competitors from taking advantage of your brand by launching imitator products? This article examines how you can protect your brand by registering either a trade mark or business name.
Choosing a Trade Mark or Business Name
A trade mark and business name have different purposes. Registration of each will protect your brand in different ways. Therefore, it usually makes most sense to register both.
|Business Name||Trade Mark|
|Definition||The name under which your business operates.||A sign used to differentiate your business from others.|
|Registration Mechanism||Through Australian Securities and Investments Commission (ASIC).||Through IP Australia.|
|Benefits of Registration||
Identifies your business in the marketplace.
Your business name will appear on ASIC’s business name register, which may help prevent other people registering the same or similar business name.
Satisfies legal requirements of having a separate business name if you are not operating under your personal name.
Gives you exclusive legal rights to use that business name relation to certain goods or services.
Allows you to take legal action against anyone wrongly using your name.
Is a financial asset and can be sold or licensed.
How Do I Register a Business Name?
You can register your business name using the online application at ASIC Connect. Make sure you have the following details on hand:
- your Australian Business Number (ABN);
- the proposed business name;
- the proposed business name holder details; and
- addresses of the proposed business premises.
You then have 10 days to pay the registration fee of:
- $35 for one year; or
- $82 for three years.
Make sure you search the ASIC business name register beforehand to check that your preferred business name isn’t already in use and registered. Additionally, use the Australian Trade Mark Search to ensure that your name hasn’t already been registered as a trade mark. If you register a business name with ASIC that has already been registered as a trade mark, you risk infringing another business’ intellectual property rights if you use that name and may face legal action.
Many small businesses incorrectly assume that merely registering a business name is enough to give you exclusive rights to both use that name and stop others from using it. However, this is not the case. To acquire exclusive rights, you must register your business name as a trade mark.
How Do I Trade Mark a Business Name?
You can register your business name as a trade mark with IP Australia. There are three key steps involved in making an application.
A. Determine What Classes Apply
Trade marks are registered in relation to particular classes of goods or services. When selecting what classes will apply to your trade mark, select those classes that relate to the products or services that your business offers. The Trade Marks Classification Search is a useful tool to help you identify which of the 45 classes are appropriate for you.
B. Check If Your Trade Mark is Available
Your application will be rejected if you try to register a trade mark that is identical or too similar to one that is already registered. So conduct a detailed search first to make sure there are no similar trade marks registered or pending registration. Use the Australian Trade Marks Search as a starting point.
Bear in mind that the rules on similarity can be complex and technical. You will want to find a name that doesn’t look or sound like an existing trade mark. While searching can be time-consuming, it will save you the hassle and cost of starting again from scratch if IP Australia rejects your trade mark.
C. Lodge Your Application
You can submit your application to IP Australia using:
- eServices, which is IP Australia’s standard online application process; or
- TM Headstart, a pre-application service that gives you an assessment of the likely success of your application before registration.
Requesting an assessment can be an effective way to fix errors before filing an official application, saving you money from having to re-apply in the long run.
However, to be sure, you can instruct lawyers to assess your application before registration. Furthermore, if TM Headstart does identify errors, you may need a lawyer to help you decide on the easiest way to fix your application.
How Do I Enforce My Rights After Registration?
Once you have a registered trade mark or business name, it is your responsibility to monitor the marketplace for any infringement. Setting up a regular surveillance system as part of your enforcement strategy will help protect the value of your brand, while also deterring potential infringers. Search for any potentially similar trade marks using:
- the ASIC business name register;
- the Australian Trade Marks Search; and
- search engines (which can be a useful way to monitor unregistered businesses and online marketplaces).
If you find any instances of trade mark infringement, you can enforce your rights in two ways.
First, by instructing a lawyer to send a cease and desist letter to the infringing party. This formally notifies them of your rights to the trademarked name and requests that they stop using that name.
Secondly, by then commencing legal action. If the infringing party refuses to comply with the cease and desist request, you can instruct a lawyer to start formal court proceedings. A court may order:
- an injunction to stop them from using your name;
- an account of profits to return profits to you that should have been yours; or
- damages as compensation.
Enforce your trade mark rights as soon as possible after discovering any infringement. The longer a competitor unlawfully takes advantage of your brand, the more difficult and expensive it can be to address the damage.
Registering your business name with ASIC is a great way to identify your business. However, you only obtain exclusive legal rights to the name when you register it as a trade mark. These rights allow you to take legal action against anyone who unlawfully uses your business name (or one too similar to it). Therefore, when deciding between a trade mark or business name, the usual answer is to have both. First register a business name, then register a trade mark.
For further guidance on registering a trade mark or business name, call LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.
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