How to Trademark a Business Name in Australia

• The following article provides a brief outline on how to trademark a business name in Australia.
• Most business owners are under the impression that they can protect their company’s reputation, goodwill, products, and services simply by registering their business or company name with ASIC.
• The only failsafe way to protect your business name from infringement, however, is to register it as a trademark.
• This article outlines the steps needed when learning How to Trademark a Business Name in Australia.

What is a Business Name?

Before you learn how to trademark a business name in Australia, you must first understand precisely what a business name is. Your business name is the name under which you operate: do not confuse your business name with a trademark.

When learning how to trademark a business name in Australia you must remember that a trademark is a registered name or logo that serves to identify the source of a business’s products or services. You must apply separately to register your business name and successfully undergo an examination by IP Australia before you can obtain trademark protection: this protection is not free or automatic.  This is just one of the steps when figuring out how to trademark a business name in Australia.  Once you have applied to trademark a business name, you may still be required to register your business name with ASIC.

How to Trademark a Business Name in Australia

A thing to remember when working out how to trademark a business name in Australia, you may be required by Australian law to register your business name with ASIC. This is to ensure that your proposed business name does not cause consumer confusion by being identical to another previously registered name. When you are placing your registration with ASIC, you must always:

• Continue to conduct business under your registered name;
• Display your business name in a visible position outside your registered premises, as well as on all business correspondence including receipts, invoices, letters, and business cards;
• Use your full registered business names and not abbreviated names
• Renew your registration every three years to ensure that you can still operate under that business name

While registering your business name with ASIC may be compulsory, you do not receive any protection over your name or other related marks associated with the goodwill of your business. The only way to receive this protection is to trademark a business name. Registration with ASIC does not:

• Create a new legal entity
• Entitle your business to limited liability or corporate tax rates
• Grant you as the owner the ownership of that business name

Registration with ASIC only serves to prevent another trader from operating under that same name within your region; it does not prevent other traders in other jurisdictions from using the same name to market identical products, or prevent overseas traders from importing products under the same name, or stop similar or identical names being used within your market.

The Benefits of Registered Trademarks

When working out how to trademark a business name in Australia, you must understand that a trademark can be a word, phrase, symbol, graphic, shape, sound, or smell, or any other distinctive mark that identifies a source of goods or services manufactured, provided, or advertised by a trader. A trademark serves as a badge of origin for products and services.

When you trademark a business name, you gain stronger protection of your trade name, trademarks, logos, and your business’s goodwill. A registered trademark grants you the exclusive right to the use of that mark, along with the power to prosecute infringing parties.  Registering your business name as a trademark not only benefits you as the owner, but it also benefits your consumer market. Your trademark:

• Is a name or symbol that the public associate with your business and the quality of your products and services
• Reassures consumers that your products or services are of a particular standard and therefore encourages a long-term consumer loyalty to your products or services
• Is an invaluable marketing and quality assurance tool
• Distinguishes your products and services from those of your competitors
• Protects you on a national (and potentially international) scale
• Prevents overseas traders from importing goods that are registered under an identical or confusingly similar mark

The commercial value of trademarks is often under-estimated by business owners, despite the fact that intellectual property has the potential to be more valuable to a business that physical property. Your trademarked business name distinguishes you as the source of a product or service that is reliable, of a good quality, and is sold under a good reputation.

You can license other traders to use your trademark: you can also sell your trademark to another trader once its value has increased and you no longer have need for it.

Trademark ownership also grants you protection against infringement from other parties, including protecting from counterfeiting and passing off. You need only provide evidence of your ownership to take legal action against potentially infringing parties.

Is Your Business Name Registrable?

While the term ‘trademark’ can be applied to a number of things, your business name must meet certain criteria to be eligible for registration. You can register:

• Words, devices, logos, or symbols
• Shapes, sounds, or scents
• The name of a founder or a representative of your company
• The signature of an applicant or owner
• Words that have no direct reference to your goods and services, or are unrelated to the nature and geography of your business
• Invented words
• Other distinctive marks

Your business name and other intellectual property must distinguish your goods and services from those provided by the competition. For your business name to be registrable, it cannot be similar or identical to another trader who provides similar goods or services to you. Your mark must be truly unique to be eligible for registration.

You can determine whether or not your business name is available for trademark registration by conducting a series of trademark searches. A trademark professional can assist you in performing these searches.

Once you know that your mark can be registered, you must file an application with IP Australia and undergo an examination, as well as a period of opposition, before you can achieve registration.

Trademark Infringement

Once you trademark a business name, you have the ability to take legal action against infringers. The main remedies against infringement in Australia are:

• An temporary or final injunction to prevent the infringer from continuing to offend;
• Having the Customs Chief Executive Officer seize and destroy goods infringing goods that have been imported
• A ‘Mareva Injunction’, preventing infringers from disposing products that are required to satisfy a claim
• Claiming the profits made by the infringing party under an infringing mark
• Claiming damages for losses suffered due to infringement

You cannot rely solely on business name registration to protect your intellectual property from infringement. Trademark a business name to increase the value of your business and ensure that you have legal remedies available to you should a competitor infringe on your rights.

BIO:

Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.

In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.

Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.