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Trade Marks - why it's important to search before using a business name

One of the first, and seemingly simple, steps in any start-up journey is to select and register a business name. However, a common misconception is that a business or company name can be used in the same way as a trade mark and gives the same protection. This is not always true, and mistakes in this area at an early stage can have damaging consequences later on. Equally, failing to identify existing trade marks which are similar to your proposed business names could prevent you from using your properly registered business name as a trading name. 

The following makes the important distinction between the two a little clearer, and provides guidance on how to avoid future problems.

A business or company name is the name under which your business operates and is used to identify your business for regulatory and legal purposes.

A business name or company name must be registered with the Australian Security and Investments Commission (ASIC), and it cannot be identical to one that has already been registered. A search of registered business and company names can be completed using the ASIC Registers. When you have identified a unique name, ASIC manages the registrations of all businesses and you can complete the registration process online through their website.

Many believe that by registering a business name online, they receive exclusive legal rights to trade under that name in your sector - but this is not the case. A registered trade mark legally protects your brand identity, or “mark”, and can be used to prevent others from using the same or a deceptively similar mark.

Trade marks are names, words, logos, colours or combinations of these which distinguish the goods and/or services of one business from those of another in the market. A registered trade mark will give you the exclusive right to use, or license another to use, that mark for the goods or services specified in the registration throughout Australia. It can become an extremely valuable asset. 

The critical point is that a single company can be registered with ASIC under one name, but hold the exclusive legal rights to trade under a brand name or logo that is completely different to their business name.

A registered trade mark also does not prevent another party from registering the same or similar words as a business name. A person can still register a business name that is identical to a registered trade mark. When ASIC receives an application to register a business or company name, they don’t perform a cross-check with all current registered trade marks in Australia. This is because trade mark infringement only occurs when a business owner uses a mark that is identical or deceptively similar to a registered trade mark to identify and trade their goods or services that are the same, or similar, to those for which the trade mark is registered.

Therefore, business owners must be mindful that even though a business can be registered with a name identical to a registered trade mark, using that name to brand and identify products and services may lead to a legal dispute.

To avoid a situation where your business name cannot be used to brand your products, a business owner should search the Australian Trade Mark On-line Search System (ATMOSS) before using a name or registering a business or company name. When completing this search, it is important to remember that trade marks need only be ‘deceptively similar’ to be considered an infringement. You should therefore extend searches to include words that are similar, look similar, have a similar sound or are made up of similar parts. For example, if you are completing a search for “EasyDine”, also search for “Easy” and “Dine”, and try substituting “Easy” with “Ezy” or “Ezi”, “Dine” with “Dyn” or “Dyne” and trying a few combinations of these.

Finally, we also recommend completing common law searches; which include internet searches, social media searches and domain name searches. A common law search identifies relevant unregistered trade marks that may have a reputation in Australia and could potentially be asserted against you. A little time spent now could save you money, effort and heartache in the future.

A registered Trade Mark Attorney can help you complete an application and provide advice on any of the challenges above as well as other intellectual property issues, such as possible international trade marks and matters of infringement. A Trade Mark Attorney can also assist you in completing common law searches, searching on ATMOSS, and identifying possible pitfalls. The Institute of Patent and Trade Mark Attorneys of Australia is a good place to look for the right attorney for your business. 

Authors:  Jacqui Symonds and Dr David Tso work on the Trade Marks team for Fisher Adams Kelly

DISCLAIMER: This article should not be regarded as constituting legal advice in relation to particular circumstances. This article is merely a general comment on the relevant topic.

Published on 12th November 2015
(Last updated 28th March 2018)

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