The differences between business names and trade marks

Registration of a business name satisfies a legal obligation for carrying on business under that name. On the other hand, a trade mark, those words, devices, or other signs by which customers often recognise or remember a business, have a different purpose and different requirements for registration, as well as different rights and protections afforded the trade mark owner.

When is a business name available to use and register?

Registration of a business name is managed under the Business Names Registration Act 2011 and the Business Names Registration (Availability of Names) Determination 2015 (the Legislation). There are three criteria for determining whether a business name is available:

1. Is the proposed business name the same as a prior business or company name registration?
2. Is it undesirable?
3. Does it contain restricted words or expressions?

Is the business name similar to prior registered business names?

When making this assessment certain words are ignored as they are considered unable to assist in distinguishing between two names:

1. Use of “a”, “an” or “the”.
2. Use of entity types such as association, co-operative, incorporated, limited, pty, etc.
3. Whether a word is singular or plural.
4. Font, upper/lower case, spaces, hyphens, punctuation marks, accents.
5. An abbreviation or acronym.
6. Use of domain name indicators such as “www”, “net”, “org” or “com”.

In addition, certain words or terms are deemed to be the “same” as each other, as set out in Schedule 1 of the Legislation. Examples are:

1. accom, accommodation, holiday accommodation
2. B&B, Bed and Breakfast
3. Australian, Aussie, Australia, Aus, and Aust.

Phonetic similarity to a registered business name will also prevent registration. Examples are:

1. Dollar Shop is the same as $Shop
2. Creative@Work is the same as Kre8tive at Work
3. 100% Cats is the same as 100 percent Kats.

It is worth checking Schedule 1 of the Legislation as there are some words or terms that are deemed to be the same notwithstanding phonetic and visual differences, and variations in meanings. Examples are:

1. Holidays, travels, trips, travel service, travel centre
2. Ceramics, ceramic tiling, tiles, tiling, tiling services, tiling solution
3. Body care, skincare, skin therapy

Undesirable names

These are names which would offend the public or sections of the public, or which incorrectly suggest a connection with well-known persons or entities. Examples include:

1. The Commonwealth Government
2. United Nations
3. Sir Donald Bradman.

Restricted words or expressions

Certain words or terms are restricted as set out in Schedule 2 of the Legislation, while some may be available to use if consent under the relevant authority is obtained. Examples are:

1. Total restriction: charity, fire brigade, GST, guarantee, police, RSL, stock exchange, trust.
2. Available with ministerial consent: Anzac, Red Cross, Geneva Cross, United Nations, University.
3. Available with relevant authority consent: bank, building society, credit union, banking.

The rights granted by registration of a business name

The regulatory burden is minimal for registration of a business name - if the registering party has an ABN, the fee is paid, and the name is available, then registration can be obtained within a day.

However, a business name registration does not provide the right to use that name or to prevent others from using the same or similar name as a trade mark or business name. The obligation remains with the business owner to ensure that the business name is available to use and the type of investigations needed are essentially the same for both trade marks or business names as discussed below.

When is a trade mark and business name available to use and register?

To check whether a trade mark and/or business name is available to use, and possibly register, searches are needed to ensure there are no prior similar trade marks, business names or company names (trading names) registered or in use by competitors in the same field of business. Searching the IP Australia trade marks database and ASIC’s records is only one part of the search process.

It is also important to search for any unregistered rights (common law rights) which a common law rights owner may have as a result use of a trade mark or trading name in the marketplace.

The aim of searches is to ensure that adoption of the proposed mark and/or business name will not:

• infringe a prior registered trade mark
• give rise to objection based on common law rights

and in addition, to ascertain if the proposed trade mark and/or business name is available for registration.

Trade mark registration provides strong rights – while business name registration meets legal obligations

Business name registrations satisfy regulatory requirements only, while the benefits of a trade mark registration are:

• reserving the mark for use while a business is being set up or products being prepared for launch
• granting exclusive right to use the mark throughout Australia
• providing the right to stop others from using the same or similar trade mark for the products and services covered by the registration
• that the infringement provisions available for registered marks provide an easily enforceable right against misuse by competitors
• that a trade mark registration is an asset and a property right that can be licensed, transferred or sold.

Because trade mark registrations provide strong ownership rights it is useful to discuss registration of your marks and business names with a trade marks attorney who will provide assistance for choosing, clearing and registering trade marks, as well as business names.