Your right to use a particular business or product name typically requires an assessment of what business or product names your competitors are already using in the market for your particular product or service. Similar names in the same market could create confusion or mislead/deceive consumers into believing that your products/businesses are connected – at risk of breaching the laws of passing off and consumer protection.
In the past, businesses using similar business names, but in different States, were not necessarily in direct competition with each other, therefore there were not as many issues over the rights to use a particular name. However, with the ever increasing use of the internet to sell goods and services, the market has effectively broadened, with the result that businesses in different States could argue that they are competing in the same market. This obviously then leads to issues as to who has the right to use the business name.
It is not enough to have registered the business name. (Note that since 2011, business name registration is handled by the Federal agency, Australian Securities & Investments Commission (ASIC) – it was previously handled by the various state agencies (e.g. Office of Fair Trading in New South Wales)). Business name registration does not give you any proprietary rights in the name, therefore you do not automatically have the right to prevent anyone else from using the same or similar business name.
Similarly, registering the name of your corporation (e.g. Widget Pty Ltd) does not prevent anyone else from using a similar business or corporation name.
Despite the lack of rights arising from the business or corporation name registration, you may have rights under the laws of passing off and/or consumer protection if you can establish that the competitor’s use of the same or a similar name is misleading or deceptive, or likely to mislead or deceive consumers into believing that there is an association between the competitor and your business. In this instance, to assert your rights, you would need to establish that you have a pre-existing established reputation, that the conduct is misleading or deceiving, or likely to mislead or deceive, consumers.
However, to do this typically requires lengthy correspondence between you and your competitor, and the threat of legal action to enforce your rights. At the same time, your competitor may take steps to register their business name as a trademark – in which case you would need to argue your case, and establish that you have a pre-existing reputation in the particular market.
Your position is obviously far less certain and secure than if you have a registered trademark helping you to establish your right to use the name.
How do I register a trademark?
The best form of protection is to register your business name and/or your logo as a trademark with IP Australia.
Registration of your logo will prevent anyone in the same market from using a logo design that is the same or similar to yours (in terms of style, colour, design etc). Registration of your business name will prevent anyone in the same market from using a business name that is the same or similar to yours (irrespective of the style, colour and design of the logo they use for their business).
How do I register a trademark?
There are a number of steps in the trademark registration process:
- Deciding what class(es) of goods and services you wish to register your trademark in. In Australia, there are 45 classes of goods and services to choose from.
- Searching the classes for any existing trademark registrations which are the same or similar to your proposed trademark registration.
- Preparing your trademark registration application – it is not enough to identify the class of goods or services that you wish to register in. You will also need to specify the particular type of goods or services that you supply. You can either select an existing description from the “picklist“, or formulate your own description of your goods/services.
- Lodging your trademark registration application – once lodged, IP Australia will consider your application, advertise it, wait for any objections from any pre-existing trademark owners, and if no objections are received, then IP Australia will register your trademark. The whole process typically takes 12 months.
Matters concerning trade marks as of October 2015
- Granny Flats Australia Pty Ltd applied for registration of the trademark “Granny Flats Australia”, but was opposed by Davley Building Pty Ltd t/as GrannyflatsWA.com, based on claimed prior use, or existing reputation, in the trademark (still being decided)
- Medicon eG Chirurgiemechaniker – Genossenschaft opposed the application by A.R. Medicom for a trademark relating to medical equipment, on the basis that it was deceptively similar to an existing registered trademark (opposition partially upheld)
- Health Boutique Pty Ltd opposed the application by Boom Ideas Pty Ltd for a trademark for a type of tea, relying on an existing reputation in social media channels and in online markets (opposition rejected)
Contact our trademark specialist, Melissa Lammers, if you have any questions.