What's the difference between a business name and a trade mark?

STEPHEN ANNICCHIARICO

TECHNOLOGY & IP ASSOCIATE

What’s a business name?

A business name is an identifying name for your business; a mere “shop front” that enables people to distinguish your business in the marketplace.

Registration of a business name:

Does

  • Allow for your business name to be registered Australia-wide (i.e. no need to register on a state specific basis).
  • Stop others from registering business names that are identical (or substantially identical) to your registered business name(s).

Does not

  • Give you exclusive ownership rights over, or a proprietary interest in, the business name itself.
  • Prevent any other party from using that name, in connection with their business operations.
  • Provide you access to strong grounds of legal recourse to stop another party using names associated with your business.

But I thought business names were registered on a state-by-state basis?

The national business names register was introduced in 2012, eradicating the need to register your business name on a state-by-state basis (as was previously the case).

What happened to state-by-state business name registrations when the national system was implemented?

All business names registered pre-2012 were transferred to, and merged with, the national business names register, irrespective of such business name’s originating state of registration.

 

 

What if my business name was identical to another business name registered in a different state prior to the national business names register?

Upon amalgamation of all state registered business names, those business names that were identical (or substantially identical) to another business operating in another state or territory were distinguished from one another (e.g. first registered in South Australia in 1993 vs first registered in Victoria in 1998). However, such details do not change the existing business name in any manner, it simply allows people to differentiate between two identical business names.

What’s a trade mark?

A trade mark provides you with ownership rights (i.e. a proprietary interest) in the words or images that have been registered with IP Australia (those that you have been using whilst carrying on business in Australia). Accordingly, a trade mark gives you the ability to stop others using your name as (unlike a business name) registration of a trade mark gives you intellectual ownership rights in the words or images that have been registered.

How can I protect my business’ brand without a trade mark?

The key mechanisms include:

Passing Off

This remedy stops another party from using your registered business name in a manner as to mislead or deceive people into thinking their business is your business (i.e. infringing your business name). In such cases, you may have grounds to institute proceedings against the infringing party, however this is an expensive and complicated exercise.

Opposition of Trade Mark

Where a business has been operating under a specific name (having generated notable goodwill) and another business attempts to register that name as a trade mark (or a trade mark substantially similar to that name), the earlier business may oppose the registration of the new business’ trade mark (irrespective of the fact they have not registered a trade mark).

However, in the event you had registered a trade mark, you would have easier and (more) inexpensive access to stopping others from leveraging from your business’ goodwill and intellectual property.

The gist of it

1

Don’t wait until your rights are infringed, register a trade mark from the outset of your business for legal protection.

2

Registration of a business name does not give you any ownership rights over the business name.

3

Registration of a trade mark provides you with access to easier and more cost-effective legal avenues to commercially protect your business and its brand.

4

“Passing Off” and other remedies may be used to stop others from using your registered business name, but such remedies are expensive and complicated, and would be avoided by registering a trade mark.

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