News & Insights

An essential part of establishing any agricultural business is choosing and protecting the right name.  It’s vital to ensure that the name closely aligns with the image and values you want your agribusiness to represent.  But it’s important that the name you choose is also available for you to use.

Name registration

A common misconception among business owners is that registering a website domain or a business name gives them exclusive rights to that name.  While registering a domain secures a web address (URL) for customers to visit, it won’t prevent others from using your name or trading under a similar one.

To secure proprietary or ownership rights in your business name, you must register a trade mark.  Once a trade mark is registered, you have the legal backing to prevent any third party from using a name that is substantially identical or deceptively similar to your trade mark.

A trade mark serves as a distinctive sign or indicator used by an individual, business, or organisation to uniquely identify the origin or source of its products and services to consumers.  It helps distinguish your products from those of other entities.  Typically, a trade mark consists of either a word or a logo and functions as a “badge of origin”—something that, to a consumer, signals who is offering the goods or services.

Trade mark protection

To obtain a registered trade mark, you must apply with IP Australia, the Government agency that administers  trade mark rights.  In your application, you’ll need to specify the products or services the mark will cover.  IP Australia examines the trade mark to determine its eligibility for registration.  The two main criteria they consider are whether the mark is inherently “distinctive” and whether it is substantially identical or deceptively similar to an earlier filed trade mark.

In broad terms, IP Australia will reject a trade mark application if the mark isn’t distinctive.  A mark is considered to lack distinctiveness if it’s so common that others in the agricultural sector would naturally want to use the same word or combination of words to describe their own goods or services.  For instance, attempting to register the word “Apple” for selling apples would likely be rejected, since it would prevent other farmers from using the term for their produce.  Similarly, common contractions or abbreviations are also likely to be non-distinctive.  For example, RoHoe was considered an abbreviation for the words “rotary hoe” and therefore refused trade mark protection.

Another trap is including a place name, or your own name, in your trade mark.  Unless all your products come from that location, the trade mark may be refused on the basis that it would be misleading and deceptive.  Additionally, if your personal name is a common one, it is unlikely to be considered distinctive.

However, if you were to register a unique name or a made-up word, like “Google”, for a search engine, the trade mark office would consider that term to be  distinctive.  The distinctiveness of a trade mark depends on the types of goods or services you intend to offer.

Additionally, IP Australia will reject a trade mark application if the mark is found to be “substantially identical” or “deceptively similar” to an already registered mark.  A trade mark is generally considered deceptively similar if, when comparing the two marks, someone might “wonder” if they belong to the same producer.

However, if you have been operating a business for many years, particularly a family business or from a particular location, you may be able to overcome IP Australia’s objections by providing evidence of use.  Honest, concurrent, or prior use can establish that you used the trade mark first, which is key to registration.

Takeaways

The key takeaway is that registering a business or domain name doesn’t automatically grant ownership of that name. Neither ASIC nor domain name registrars check if another entity already has a prior reputation in the name.  These bodies don’t check to see whether the company name or brand is the same as a registered trade mark.

It’s entirely possible—and indeed happens often—that one company owns a trade mark for a particular name, while another business has a company name registration for the same name.  As mentioned earlier, the entity with the trade mark has a legally enforceable right to use the name and, more importantly, to stop the other business from trading under it, particularly if the trade mark pre-dates the date of incorporation of the company.

Before settling on a new name for a product or service, it’s wise to conduct thorough searches to determine whether the trade mark you want is substantially identical or deceptively similar to any existing or pending trade marks, both registered and unregistered.  If your proposed brand is too similar, using it could result in a trade mark infringement claim being made, and could also potentially lead to objections from IP Australia and possibly  even legal action for misleading or deceptive conduct under the Australian Consumer Law (ACL).

We can help

Macpherson Kelley is here to help. Get in touch with our Intellectual Property team if you are considering a new brand name for your goods or services, or want to make sure that your current names are properly protected.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.