Business names and Trademarks – What you need to know

February, 2015

By Scott Coulthart

In this article, Scott Coulthart clears up a few myths about business names and summarises some of the differences between business names and trade marks.

Do I Own My Business Name?

You have put a lot of time and effort into your business, even before it opened its doors. Usually, a significant part of that time was thinking up a suitable business name / brand to trade under, and because branding is such an important part of just about every business, it makes sense to take care of and protect it.

But I have registered my business name – so it belongs to me and no-one else, right? Unfortunately, maybe not.

Having a registered business name or a company name does not, by itself, give you any intellectual property rights in that name.

The fact that it is registered as a business name or company name might mean that no-one else in your state or territory can register exactly the same business name or exactly that corporate name. However, it does not stop anyone using it if they don’t try to register it. They might not be required to register it in the same way depending upon how they use it, and it does not stop someone using as a trading name anything that is deceptively similar.

You see, a registered business name or corporate name is not something that protects you – it is something you are required by law to have.

If you want to protect that name in the best possible way, you should register it as a trade mark.

What About My Logo?

If you have a graphical logo (that is, any sort of branding that is more than just plain words), then your branding is probably a little more distinctive than if you just used words with no stylisation or imagery.

If the graphics are original artwork, copyright probably protects them – but are you the owner? If you personally didn’t create the artwork, you might not actually own it, in which case you need to do something about that as soon as possible – it is always best for you to own it. It all comes down to what you agreed with your graphic designer.

Even if you own the copyright, though, you should still try to register your logo(s) as a trade mark, because registration as a trade mark gives you so much broader protection than if you leave it unregistered, and it greatly reduces the risk that someone will “accidentally” use your logo for their own business.

What Is a Trade Mark and What Does It Cost?

A trade mark is a badge of origin designed to distinguish your business, goods and/or services from those of others. Logos, slogans, trading names, product and service names, even sounds, colours and smells, all qualify as trade marks if they are being used as a badge of origin in this way.

It is not mandatory to register a trade mark, but the reason you would normally do so is so that you get a monopoly over use of that trade mark for the goods and services for which you register it, and there is a clear, searchable and legally protected record of when your statutory rights began and in what respect the trade mark is protected.

How much they cost depends upon who you get to register it for you. You can do it yourself, but because so much depends upon whether you register it in respect of the right goods and services and choose the correct options, it is always recommended that you get an experienced professional (IP Lawyer or Trade Mark Attorney) to do it for you.

There are generally three lots of fees involved if you seek help to lodge it, namely:

The cost varies depending upon the type of application and the service provider, but you would normally, for example, get change out of $3,000 for a standard application in (say) two classes of goods and services. Once the trade mark is registered, there is nothing left to pay for 10 years unless there is some opposition to it. After 10 years, you can pay a renewal fee to have it renewed for another 10 years, and you can keep on renewing it.

Again, you can do it yourself – IP Australia’s website makes the process pretty easy to find and to follow. However, before the registration process, it is important to do proper searches to ascertain whether you are likely to succeed in your application and what sort of grief, if any, you might suffer if you do seek to use your proposed trade mark. Those searches should ideally be done by someone with a lot of experience with that as they will know the sorts of things to search for and know how best to analyze the risks and likely outcomes for you.

Also, choosing classes and the descriptions to go with them is not always straight-forward. That is why it is recommended that you get help unless you are quite experienced with lodging trade mark applications.

Why Bother With a Trade Mark?

Because the statutory rights you get if you lodge and succeed in registration of your trade mark are much broader and more certain than the rights you have (if any) without registering the trade mark.

If you do not lodge your trade mark and someone else uses a mark (or even your mark) in a way which can cause your business grief (for example by confusing your clients that there is some connection between you and the other trader), you can only stop them if you can prove they are breaching your rights by passing off or breaching trade practices legislation. These things are not at all easy to prove, and if you have only limited reputation with a new trade mark, you may not have any rights at all against the other party.

If you register your trade mark, you avoid those arguments entirely because it is clear what rights you have and when they commenced.

Another advantage of registering your mark is that your mark ends up being on a publicly searchable register, which most savvy business operators will search before using a new mark to ensure that they don’t breach your or anyone else’s rights. Without registering your mark, your mark does not otherwise appear on any publicly searchable register and you risk someone innocently coming along to use the same or a deceptively similar mark.

Original services / products – can I protect them?

If you have created original services or products, these may well be able to be protected also. However, trade marks are not generally the way to do that.

Your original products and services might be protected by one or more of a patent, copyright, registered design and non-disclosure (or other protective) agreements.

If you have developed anything unique and want to protect it, you should get legal advice about it as soon as possible and preferably before you expose whatever it is to the market (because you might lose your right to protect it then in some cases).

If you have any questions about trade marks, business names or anything in your business you want to protect, please feel free to contact the author.

Contact Mills Oakley

For more information, please contact:  

scott-coulthartScott Coulthart | Special Counsel
T: +61 7 3228 0437
E: scoulthart@millsoakley.com.au

dale-cliff

Dale Cliff | Partner
T: +61 7 3228 0430
E: dcliff@milsoakley.com.au

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