Trade Marks vs. Business Names – have you protected your brand?

It is a common misconception that a trade mark and a business name are the same thing.  This is not the case. A trade mark protects your brand, while a business name merely acts as an identifier of your business for the government.  A business name gives you no right to use or prevent others from using your business name in the course of trade as a brand.  It is therefore important to prioritise the registration of your brand/business name as a trade mark to secure your right to use it (and prevent third parties from using it) in the course of business.

What is a business name?

• A business name is connected to your Australian Business Number (ABN) and is the name under which a business operates.
• When starting a new business, you will need to register your business name if you choose to operate as a sole trader, partnership or a trust or use a trading name that is different to your company name.
• All business names are registered through the Australian Securities and Investments Commission (ASIC) website.
• However, there is no need to register a business name if the name of your business is you or your spouse’s first and last name.
  • For example:
    • If you have a mechanical business named ‘John Smith’, John is trading under his own name and does not need to register for a business name.
    • If however the business was called ‘Smith Automotive Mechanics’, then John would need to register the business name with ASIC.
• You can search for an existing business name through ASIC Connect.
• While the registration of a business is required in Australia in order to run a business, it doesn’t provide protection where use of your brand name is as a badge of origin or trade mark.
• Intellectual property rights do not attach to a registered or unregistered business name.

What is a trade mark?

• A trade mark is a unique sign that is able to distinguish your business’s product or service from those of other traders.
• It can be a sign, symbol, letter, number, name, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of these.
• Trade marks are registered through the Australian Trade Marks Office, being IP Australia .

Protection provided by a trade mark

Provided a business name isn’t already being used by another trader or isn’t already on the Australian Trade Marks Register, a business can apply to register a trade mark which when registered will give the registered owner exclusive ownership rights, including the right to use, licence and sell that mark. Unlike registered business names, the holder of a registered trade mark is able to bring legal action to prevent others from using that mark.

A trade mark upon registration is protected in all Australian states and territories for an initial period of 10 years, and can be renewed (potentially indefinitely).

It is important to remember that a trade mark can be removed from the Australian Trade Marks Register where a trade mark is not used in the course of trade for a period of three years (NB: a trade mark is unable to be removed on this ground within its first five years of registration).

Registering a trade mark

A registered trade mark is the only way to secure exclusive rights and control of your business name in relation to the sale/provision of your products or services.  If you don’t have a registered trade mark and you wish to stop other traders from using your business name, company logo, product name or unique tagline, you will have to rely on less certain protection through the tort of passing-off or the prohibition against misleading and deceptive conduct under the Competition and Consumer Act 2010 (Cth).  This can be very costly when compared to taking the pre-emptive step of securing registered trade mark rights.

Please contact our Intellectual Property team to discuss how Macpherson Kelley may assist you in securing protection for your trade mark.

This article was written by Charlotte Olsen, Lawyer – Commercial.