It is a common misconception that business names are “the same thing” as trade marks. This may be because business owners often use the same word or words as a trade mark, a business name and as part of a company name. For example, FB Rice is a trade mark, a business name and part of the company name FB Rice Pty Ltd. However, these three variants are quite different and some of the differences are under the spotlight in this article.
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.
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:
When making this assessment certain words are ignored as they are considered unable to assist in distinguishing between two names:
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:
Phonetic similarity to a registered business name will also prevent registration. Examples are:
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:
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:
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:
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.
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:
and in addition, to ascertain if the proposed trade mark and/or business name is available for registration.
Business name registrations satisfy regulatory requirements only, while the benefits of a trade mark registration are:
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.