It depends on what you mean by “own” – but if you mean that you have exclusive rights to the name and can prevent competitors from using it – no, not really. A trade mark registration is the only way to own a name in this sense.
Trade marks vs business and other names
A trade mark registration is your property that you can own and sell or license to others. If someone infringes your trade mark, you can send a letter of demand (cease and desist) to require them to stop and, if necessary, sue them for trade mark infringement.
You have to give a name to your company, even if it is just ACN 123456789 Pty Ltd. If you trade under a name that is not your legal name, or the full name of your company (including the Pty Ltd), you are legally required to register a business name. But company and business names do not give you any rights to the name. They are not meant to. Rather, the companies and business names registers are searchable databases designed to let people identify who is running a business (see ASIC Connect https://asicconnect.asic.gov.au ).
Domain names and social media handles are important ways to identify your business, but, of themselves, they give you no protection.
If your use of a company, business, domain or social media name infringes another’s registered trade mark, a Court can order your business to change its name and pay compensation.
If you develop a reputation in your name or the name of your products, you may be able to sue an infringer for “passing off” and misleading or deceptive conduct – arguing that the infringer is passing off its goods and services as yours or otherwise representing that it is connected with your business. However these claims can be difficult to prove because:
- You need to prove your reputation – so they will not protect unused marks;
- You need to prove your reputation where the other party is active – if you have a reputation only in Victoria but the other party only trades in New South Wales, you will not be protected;
- The whole of your conduct and get-up is compared to the whole of the other party’s conduct and get-up – so that if they use a similar name but consumers would not be misled into believing that they were connected with you, you are not protected.
Benefits of trade mark registration
By contrast, trade mark registration:
- Normally covers the whole of Australia;
- Acts like a silent cop – businesses who search the trade marks register and see your mark will be warned off using a similar mark for similar goods or services;
- You do not need to prove your reputation in an infringement claim; and
- Generally, only the infringing mark is compared to your registered mark – it does not normally matter that the infringer disclaims any connection to your business or has a different branding.
Is your mark registrable?
However, trade mark registration is not as simple as company or business name registration. A trade mark application will be rejected if:
- It is too similar to a mark that is already on the Trade Marks Register for similar goods or services;
- It is too descriptive of the products or is a term of praise for the products, eg AWESOME ELECTRONICS;
- It uses a common name or a geographic term eg SHANE’S PLUMBING or MELBOURNE CITY CARS.
Filing a trade mark application may look easy, but it can be complex and can involve strategic decisions about the best way to proceed. Seeking advice before self-filing, or having a trade marks attorney take care of everything, can save confusion and missteps. Sometimes it is possible to overcome the objections of the Trade Marks Office to your application, but knowing how the trade marks system works is a real advantage when navigating it.
I have practised in intellectual property, including trade marks law, for over 30 years. Please contact me here if you need advice on the registrability of a proposed trade mark or possible infringement of a registered trade mark.
This blog entry provides general information only, and is not intended as legal advice specific to your circumstances. Please seek the advice of a legal professional or trade marks attorney if you have any particular questions.
Liability limited by a scheme approved under Professional Standards Legislation
© Margaret Ryan, Melbourne, Australia, 2022