My Business Name Is Registered, Why Should I Register It as a Trademark?
A business name registration only registers the name of your business, for the purposes of allowing the public to know who they’re dealing with. This is a legal requirement when trading a business under a name other than the legal entities’ name. A business name doesn’t have legal personality itself, it’s more like an alias for whoever is operating the business. And so, in order for members of the public to find out who it is that they’re dealing with, they need to go to ASIC’s website and their database and find out the person or the entity that owns the business name. So that’s the purpose of registering a business name, is so the public can find out who’s behind the business name.
A business name registration doesn’t protect intellectual property in any form though. It might prevent other traders from registering the exact same name, or very close variants of it, like plural forms or adding the word “the”, but it won’t prevent other traders from registering very similar names, let alone from using very similar names for their competing business, which can create confusion in the marketplace. And so, while you may think that registering your business name protects your name from use by other parties, effectively it doesn’t.
What you need to do if you want to protect the IP and your business name, is to register it as a trade mark. A registered trade mark will ensure that you have the right to use your name as a trade mark and to also license other people to use your trade mark, if that’s what you wish to do. A registered trade mark is also enforceable against third parties who infringe your trade mark by using the same or deceptively similar names for the same or similar goods or services to those you provide under your trade mark; assuming they don’t have any defense to infringement.
It is a common assumption that registering the business name provides the business owner with ownership of that name and the right to use the name. However, this is not the case. Using a business name as a trade mark (i.e. a distinctive element used to distinguish your business goods and services from others) could infringe the rights of a trade mark owner. Having a business name registration will not act to defend an infringement claim in and of itself. We strongly encourage anyone considering starting a business to check the trade marks register before registering a business name to ensure the name is clear to use.
What if I have been trading under my business name for many years?
Even if you have been trading under the name for a long time we still recommend you consider trade mark registration for your name. It is much easier to take action against another person using a similar name for similar activities when you have a registered trade mark rather than having to rely on unregistered common law rights. In Australia, you can have common law rights in a trade mark that you use without a registration. Generally, to rely on these rights will require not just use over time, but also to be able to demonstrate you have acquired a reasonable reputation in connection with that name.
However, if you’ve been trading under your business name for a number of years without having registered a trade mark, then you may have a defense to infringement, if it happens that there’s someone else who has a prior registered trade mark, simply by virtue of having used it for a period of time. But it will depend on the circumstances. For example, if you are actually the first user there’s unlikely to be infringement. Also, once a name has been used for many years, it’s less likely a trade mark owner would have solid grounds to claim any damages because the question is: why have they only just become aware of it and what damages are they entitled to? It would be unusual to be entitled to years worth of damages if it was innocent infringement.
That being said, if you’ve just adopted a name and you’ve been using it for a short period of time then it’s more likely a trade mark owner could demand you cease use of the name and/or claim damages if infringement action is taken. This is another reason it’s very important to conduct trade mark searches when commencing a new business and considering a new business name.
Are all business names able to register as trade marks?
Not all business names need to be registered, no. Not all business names are used as trade marks, so in that case you might not register the name as a trade mark and it’s unlikely to infringe another party’s trade mark rights if not being used as a trade mark. Often they are, but they’re not always being used as a trademark. Sometimes a business name is just there purely to identify the business. But they might be selling a product that has a completely different brand on it, and the business name just appears in fine print. In that case, you’re not using your business name as a trade mark and there’s not necessarily the need to register it as a trademark. However, in that case, another party might be able to register a similar name as a trade mark and use it accordingly.
