What’s in a name?
Don’t be fooled into believing that if you have registered your business name, company name or website domain, that you have sole rights over the use of that name in Australia. The only way you can claim any rights to your name (in whatever form) is by registering it as a trade mark (a trade mark is a word, phrase, symbol, logo, etc. that distinguishes a company’s goods or services from any other). A trade mark not only provides legal protection for your business but also stops other businesses from using the same or similar trade marks.
So be sure to check IP Australia’s website (https://www.ipaustralia.gov.au/) before you register your business name (which is a legal requirement) to see whether it is already a registered trade mark.
If you have already registered your business name and you find that the trade mark belongs to another company, it is within that company’s rights to apply to the courts to cancel your business name. If this application is successful, you will find yourself having to trade under a new business name, change all your marketing collateral and lose all the brand recognition you have built up under that business name since inception.
As you can see it can be a costly process and it doesn’t end there.
The court can, at the request of the registered trade mark owner, grant damages or an ‘account of profits’. Damages will not be granted however if a) the infringer has already applied for an order to have the registered trade mark removed from the register in respect of the infringing goods and services. Or b) the court find the registered trade mark was not used in good faith with regards to the goods and services, during the time the registered trade mark was claimed to be infringed.
Additional damages may be granted if the court feel is appropriate with regard to:
- The flagrancy of the trade mark infringement.
- Setting a precedent for other trade mark infringements.
- The conduct of the infringer after the infringement.
- The conduct of the infringer after he/she was informed that they had allegedly infringed the registered trade mark.
- Any gain made by the infringer as a result of the infringement
- Anything else the court deem relevant.
Registering your trade mark for both Name and Logo is therefore very important if you want to protect your business brand. However, if for whatever reason you cannot apply for registration of both your Name and Logo, the Name will provide greater scope of protection. This is because a name is less unique than a logo and could be considered substantially identical to other business using that trade mark and could result in an infringement of your registered trade mark. Also, there is an increased likelihood that IP Australia will reject your application because you have not distinguished your goods and/or services sufficiently enough from those of other businesses offering the same or similar goods and/or services.
With this in mind, you must be very careful when applying for a registered trade mark, you should bear in mind the protection you will receive versus the possibility of having your application rejected.
The registration process can be quite complicated as you will need to select the appropriate classes of goods and services from IP Australia’s list of 45 classes, as well as “sub-classes” for each class you have picked. We therefore suggest you seek legal advice and assistance with the registration to ensure that it is done properly and gives you the best protection against other trade marks.
If you are seeking other protection for your business, do not hesitate to speak to one of our insurance brokers at Coverforce Leed Insurance Brokers. We have over 30 years’ experience of giving advice to businesses and tailoring insurance solutions to best suit your needs.
Article reproduced with permission from ‘Business Names V Domain Names V Trade Marks’ By Murfett Legal. Click here for more information on their legal services.