Business names and trade marks are not the same thing!
Having a business name is a requirement under the Business Names Registration Act 2011 so that people can ascertain the owners of a business they are dealing with. The register of business names is now maintained by ASIC.
Registration of a business name is required before carrying on a business or trade within Australia. Exceptions to registration include:
- those operating as sole traders with their operating name being identical as their first name and surname (if it has “and Partners” “& Co” or “& Associates” it must be registered);
- partnerships where the operating name is the same as all of the partners’ names; and
- registered Australian companies whose operating name is the same as the company’s name.
While a business name is often used as a brand or trade mark, contrary to common belief, having business name registration does not give ownership of that name. Only a registered trade mark under the Trade Marks Act 1995 can provide that kind of protection.
If you register a business, company or domain name, you do not automatically have the right to use that name as a trade mark. If you have a registered trade mark however, you do have the exclusive right to use that trade mark throughout Australia (and other places if you obtain registration there also) and you can take legal action for infringing your trade mark if another person or entity uses it for goods or services like those covered by your trade mark registration.
A trademark can be a word or words, a phrase, a logo or a combination thereof (and even scents, sounds and colours!) which identify and distinguish a business’s goods or services from those of others. You can also trade mark your domain name if it fits within the requirements of the legislation.
There is no legal requirement to use the TM or ® symbols however, the TM symbol indicates that you have a pending application for the brand or that you are claiming some rights in the name without trademark registration whereas the ® symbol indicates that the trademark is registered. Ideally, the ® symbol should be used wherever the trade mark is used.
After establishing or growing a business, the last thing you would want to do is receive a ‘cease and desist’ letter from lawyers for a competitor asking you to cease using their client’s trade mark and to account for profits you have made, so don’t rely on a business name registration thinking that it goes you any protection as it does not.
For more information, please call Michael Tzirtzilakis , Head of Commercial Law at Bell Partners Legal, on (02) 9249 7600 or email email@example.com