Have you ever thought about how to trademark a business name? As the owner of a business, you must register your business name with ASIC. Business name registration is essential to ensure that no two traders operate under an identical name: this would likely cause consumer confusion, and both businesses could stand to suffer a loss. Business name registration does not, however, protect your intellectual property from infringement. The only sure way to gain the exclusive rights over your business name is to register your business name as a trademark.
The following article explains how to trademark a business name. This article is by no means a comprehensive guide, and you should seek the advice of a trademark professional before you attempt to register your business name as a trademark.
Registering Your Name with ASIC
Before you learn how to trademark a business name, ASIC requires that you register your business name with them, to ensure that no two traders operate under the same business name. Before you begin the registration process, you need to decide upon an entity to hold the business name.
You might decide to choose:
- A sole individual
- An incorporated entity
- An unincorporated entity
- A partnership or joint venture partnership
- A joint venture
Before you can learn how to trademark a business name you must register your business name, your chosen entity requires an Australian Business Number (ABN) or ABN application reference number. Some exemptions may apply.
If your ABN has been suspended, you cannot complete your business name registration online. You will need to contact ASIC for further information and advice.
Choosing a Business Name
If you want to learn how to trademark a business name, and to register your business name with ASIC, you will need to find out whether your business name is available for registration. You can perform a ‘check name availability’ search on the ASIC website. This search tool compares your business name with all Australian corporate and registered business names. So long as your business name is not identical, you will be able to register it.
Bear in mind that your registered business name does not grant you ownership of your business name: nor does it grant you exclusive rights. Registering a business name:
- Does not prevent another trader from registering a similar name
- Cannot stop your name being used as a trademark
- Will not stop your name being used by another trader who has registered it as a trademark
- Cannot protect you from legal action in the case that your name is infringing on the rights of another trademark owner
Registering your business name with ASIC is an entirely different process to apply for trademark registration.
To learn how to trademark a business name you must undergo a much more in-depth search process. This is because your business name must be completely unique in order to be registrable. It cannot be identical to, or confusingly similar to, another registered mark associated with the same goods and services.
Your trademark search will need to cover all of the relevant Australian databases, as well as include all common law resources such as trade indexes, The Yellow Pages, and an internet search. You will need to search for names that are not only identical to your own, but also similar. A name or logo that is even similar in a single element may not be eligible for registration.
You can instruct a trademark professional to conduct this search on your behalf. A trademark professional will know which databases to search, as will also be able to interpret the results for you so that you have a comprehensive understanding of similar marks operating within your marketplace.
Before you register your business name, you should make the following checks:
- Ensure that your business name is not identical or similar to another registered trademark
- Ensure that your proposed domain name is still available for use
- Ensure that you obtain any state or territory licenses that you might require in order to use a name or conduct a specific type of business
How to Trademark a Business Name
There are a number of steps you must take before you can learn how to trademark a business name. Once you have performed a trademark search and confirmed that your trademark is available for use, you must submit an application with IP Australia. In your application you must:
- Provide personal and business details including your name, nature of business, location of business, et cetera
- Provide a comprehensive description of your proposed trademark, including proposed spelling, typeface, colouring, and other imagery
- Provide a replication of your trademark, particularly if it contains a non-standard typeface, graphics, shapes, or colours
You will also need to select a number of classes of goods and services related to your trademark. There are total of 45 different internationally recognised classes: your products or services might relate to one or several of these classes. It is important that you nominate all of the relevant classes in order to provide the required scope of your registration’s protection.
You can consult a trademark professional to assist and advise you during the filing process. It is important that you get your application right the first time to avoid time delays and additional fees.
Once your application has been filed, it will undergo an examination process. During this time, an IP Australia examiner will study your application to determine whether or not your business name is eligible for registration.
If your application is unsuitable for registration, you will receive an adverse notice. This notice provides you with information regarding the grounds for rejection so that you might remedy these. You will have a time limit starting from the date of issue of your adverse notice, so it is important that you begin to rectify all issues concerning your mark as soon as possible. A professional can assist you in responding to an adverse notice.
If your application is approved during examination, it will be forwarded into a three-month period of opposition. This period allows registered trademark holders to oppose your registration on the grounds of infringement. It is unusual for an application to receive opposition at this stage of the registration process, so you are likely to move on to registration without issue.
To secure your registration, you must first pay your registration fee. You will be sent a certificate of registration, upon which time, your business name will be registered as a trademark and be granted to exclusive rights to defend and use your mark.
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.