Think Business Name, Think Registered Trade Mark* (*maybe)

Lesley Naik

Lesley Naik

We’re bringing a political vibe to our post today and advocating for inclusion of “consider whether to register a trade mark” in the usual list of action items required to set-up the minimum business infrastructure for a new enterprise.

Most people are across the general ASIC regulatory requirement to register a business name before they commence trading (unless an exception applies e.g. companies that trade under a name which is identical to their legal name). However, much to the surprise of many a punter, a registered business name:

  • is not a registered trade mark;
  • does not protect you from third parties infringing your common law/unregistered trade mark(s); and
  • does not prevent you from infringing the trade mark(s) of third parties.

Even if you secure your desired business name (and related domain name), confoundingly, that does not mean you’re free to use it.

How do I decide whether to register my business name as a trade mark?

There are no blanket rules here except for those that relate to process.

So, when you register a business name, at the same time think: do I need to register this as a trade mark?

Add it to the list of key “Rs” relevant to setting up a business:

  • register a legal entity;
  • register an ABN;
  • register a business name (if required); and
  • register a trade mark (if desirable).

Registered trade marks are generally a great idea

Standard caveat: While registering a trade mark is usually recommended, it is not quite a “tick the box” situation. In fact, depending on the circumstances, it may not actually be the best way (or the way that is recommended be prioritised) to achieve your commercial objectives. Some of those considerations include:

  • the nature of your brand (i.e. how descriptive it is; or on the flip side of that, its level of inherent distinctiveness);
  • the nature of the different market(s) that you operate in (i.e. wholesale vs retail; domestic vs international); and
  • existing competitor trade marks and your ability to meet the evidential requirements to prove prior continuous use or honest concurrent use.

However, those situations are few and far between and any decision not to register a trade mark should be a conscious one and one which is made after having considered the issue critically through both a brand equity and risk management lens.

Proceed intentionally

When you think “business name”, think “registered trade mark” and this should prompt you to consider whether you should apply to register your business name (or a variant of it) as a trade mark. The two things are not one in the same and hopefully we’ve removed any illusion that they are!

For more information, check out our article Why Should I Register my Trade Mark?

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