Should I trade mark my business name? A Surf Coast founder’s guide

Registering a business name with ASIC can feel like claiming it, but business name registration is not the same as trade mark protection. It identifies the person or entity carrying on business under the name. Although ASIC generally will not register an identical or nearly identical business name, registration does not give you ownership of the name or exclusive rights to use it.

Registering a company name is also different from registering a trade mark. A company or business name can potentially infringe someone else’s trade mark, even if ASIC allowed the name to be registered.

A registered trade mark provides stronger protection. Under the Trade Marks Act 1995, registration generally gives the owner exclusive rights to use, and authorise others to use, the mark in relation to the goods and services covered by the registration. Those rights apply throughout Australia, subject to the scope of the registration and any applicable exceptions or defences. Registration lasts for 10 years from the filing date and can be renewed for further 10-year periods.

If another business uses an identical or deceptively similar sign in relation to the same or sufficiently related goods or services, registration can provide a direct basis for taking action. Whether particular conduct infringes a trade mark depends on the circumstances, including how the sign is used and the goods or services involved.

Without registration, a business may need to rely on passing off or claims involving misleading or deceptive conduct under the Australian Consumer Law. Those actions remain important, but they can require detailed evidence about the business’s reputation, the other party’s conduct and the likelihood of consumers being misled. Trade mark registration generally provides a clearer statutory basis for protecting a brand, although infringement must still be established.

When is it worth doing?

Ideally, consider trade mark protection before investing heavily in a new name, logo or brand. It is not uncommon for a business to invest in signage, packaging, websites and marketing before discovering that another party owns or has applied for a conflicting trade mark.

An early search can identify potential problems while changing direction is still relatively inexpensive. Depending on the circumstances, discovering a conflict later may lead to negotiations, restrictions on use or a costly rebrand.

Three things to know before you file

Search first. IP Australia’s Australian Trade Mark Search allows you to search existing and pending marks. The search should cover not only identical names but also names, spellings and logos that could be considered deceptively similar. An earlier mark may create an objection if it covers the same or sufficiently related goods or services.

Descriptive names can be difficult to register. A name such as “Torquay Surf Repairs” describes a location and the nature of the service. Other traders may legitimately need to use those words. Invented, distinctive or unusual names are generally easier to protect, although registrability depends on the mark as a whole and the relevant goods or services.

Goods and services matter. A trade mark is registered for specified goods and services, which are organised into classes. The class number alone does not determine the scope of protection. Rights may extend to similar goods or services and, in some cases, closely related goods and services. Your application should cover what you currently provide and any genuine areas of planned expansion.

What does it cost?

IP Australia charges an application fee for each class of goods or services. A standard online application currently starts at $250 per class when goods and services are selected using IP Australia’s picklist. Other filing methods and services may attract different fees.

Professional fees depend on the searches, advice and application assistance required. For many small businesses, early trade mark advice is considerably less expensive than dealing with a dispute or changing an established brand.

We help Surf Coast businesses search, assess and apply to register trade marks for a fixed fee. An initial discussion can help identify whether your name appears distinctive, what searches are needed and which goods and services the application should cover.

This article provides general information and is not legal advice. Trade mark rights and registration prospects depend on the particular name, goods, services and surrounding circumstances. Please obtain advice about your own situation.