How do I ensure I actually own my business name? I know registration is not enough.

By 31 October 2018 all businesses are required to register their trading names as a business name with the Australian Securities and Investment Commission (ASIC) in order to continue operating under that name to meet the requirements of the Business Names Registration Act 2011.

However, it is a common misconception that registration of a business name with ASIC ensures you own that business name- this is incorrect. Registration of a business name gives no ownership rights to your business name

Once you have registered your trading name with ASIC you can continue to operate under that name. In reality, registering a business name merely shows people that you are operating your business under that name.

What about a trade mark?

At Coutts, we regularly protect and secure ownership to our client’s valuable business name by trade marking their business name and, by a separate trade mark, the business logo.

Your business name is your most important intellectual property asset. Properly protecting your valuable business name with a trade mark to secure ownership is extremely important.

Once registered, a trade make of your business name gives you the exclusive right to use, license and sell that business name.

Imagine having a registered business name (but no trade mark) and being forced to rename your brand, rebrand and adopt a new business name, simply because you don’t own your business name via a trade mark. Consider the cost of this to your business and the success of your business.

Once you own your business name as a trade mark, you can prevent competitors using your name, or oppose your competitors using a name that is similar.

The protection of a business’ intellectual property through things such as trade marking is becoming an ever-increasing issue within Australia and throughout the world, with industry and businesses coming to realise that their valuable intellectual property within their business being the business name is worth protecting to the same extent as, say, the people, the culture or the physical assets of their business.

Case study: the “& TOKYO” case, 2017

The Tokyo Metropolitan Government filed a trade mark application for the trade mark of the business logo being “& TOKYO” in two trade mark classes being classes 39 and 43.

The logo “& TOKYO” was for the new business offering for transport and accommodation together with reservation services to be launched widely in Australia.

This application was opposed by A & K who also had a trade mark in class 39 (being one of the classes in common between the two parties) and that also featured the “&” prominently at the start of the trade mark.

The Tokyo Metropolitan Government was not able to register the logo brand for its business “& TOKYO” given the similarities with the trade mark already held by A & K and who had gotten in earlier in time (earlier priority date) with the trade mark to protect the A & K business.

A & K had an earlier priority date for their trade mark featuring the ampersand “&” in the same class and therefore had priority.

This is just one example of how competitive the trade mark process can be and how important it is to ensure you have the right advice about your branding and that steps to trade mark your business name are made prior to branding and launching your business.

What is the key thing I should be aware of?

It is important to be aware of the distinction between registering your business name and the protection and ownership rights that a trade mark provides. Trade marking your business name not only protects you from other businesses trading under the same or similar name, but it is a valuable marketing tool that indicates you are serious about your brand and protecting it. A trade mark of your brand equals greater peace of mind.

Existing trade marks are not considered by ASIC when registering a business name. So, even if your (unprotected) business name is different to all other registered business names, it does not guarantee that the business name you have chosen does not infringe on the intellectual property rights of another business or that it does not infringe on a registered trade mark of another business.

For further information contact:

Alexandra Johnstone
Partner
alexandra@couttslegal.com.au
02 4607 2110

 

Keely Irving
Paralegal
keely@couttslegal.com.au
02 4607 2124