- Are you looking for information about trademarking a name in Australia?
- The only sure way to protect your business name and associated equity is to register for name trademarking protection.
- There are a number of advantages to business name trademarking in Australia: trademark protection and logo trademarking protection is more expansive and reliable than common law or unregistered rights.
- Registering your business name with ASIC (Australian Securities and Investments Commission) does not give you business name protection from infringement. ASIC registration ensures that no other trader can use an identical business name: it does not, however, prevent others from using confusingly similar business names or misleading consumers.
- Trademarking a name comes with a set of exclusive rights that no other registration can provide. Please read on for more information on how to trademark a name in Australia.
Trademarking a Name for Exclusivity
Trademarking a business name is the fastest and most effective way of being granted the exclusive right to use your business name. In fact, registering your business name is a similar process to attaining a certificate of title in reference to a piece of land.
By registering your business name as a trademark, you are significantly reducing the risk of another trader registering your mark, or a confusingly similar mark, as their own. Should you not register your business name, another trader can register your name or a very similar name as their own, and you will receive a ‘cease and desist’ notice from their attorney requiring you to stop using your business name: the name that you previously believed that you owned. Legal battles concerning this type of conflict are expensive, and usually go in the favour of the registered party.
Trademark Business Name for National Protection
Your common law rights might protect your trademark within the specific region in which your trade, but trademark registration grants you nation-wide protection. Trademarking your name secures your exclusive use and defence of your trademark within the whole of Australia.
It is also possible to apply for international registration. You do not need to commence trade within overseas countries before you submit your application, either: should you foresee overseas expansion, you can register your trademark in select countries to ensure that your name cannot be used in the meantime.
Deterring Infringement of a Registered Name
Trademark registration a name prevents other traders from using or registering names or other marks that are confusingly similar to your own, so long as these marks are registered to the same goods and services as yours. Should you recognise instances of infringement, you have the right to take legal action against these parties.
The exclusive right to your business name means that no other trader can register for ownership. Once your mark is registered, it will appear in trademark searches as a registered mark, and prevent others from attempted to register similar marks. Other traders will be reluctant to apply with conflicting marks, as they may be rejected by IP Australia, or you might take legal action against them.
Even if a similar mark makes it through examination and is published in the trademark register, you have a strong right to oppose the formal registration.
When you own a registered trademark, you need to be attentive of the other marks circulating within your industry or related industries. Should you recognise a conflicting mark being used by another trader within the marketplace, you have the right to take legal action against them. You might have an attorney issue a ‘cease and desist’ letter, or in an extreme case, you might also take the infringing trader to court. You are likely to be more successful in taking legal action as a registered owner, rather than relying on common law.
Protecting Yourself from Trademark Infringement
The use of your registered trademark in conjunction with the associated goods and services ensures that you have total defence against infringement claims by other parties. Owning a registered mark essentially means that you have been granted the rights to use your mark, and so cannot be infringing on the rights of others.
Bear in mind that you can only use your mark in conjunction with the goods and services nominated by your registration. You are not protected, say, if you are registered to sell clothing but you begin using your mark on hardware products.
Licensing of a Trademarked Name
Trademarking your name makes it simpler and safer to license other traders to market goods and services under your mark. These licensees might include parties such as manufacturers, distributers, and franchisees: all important parties in the marketing, creation, sale, and distribution of your goods and services.
Increasing Property Value
By trademarking a name, you are creating an item of valuable intellection property that can be bought, sold, and licensed. Your business name takes on significant value once it has been trademarked, as your goodwill and business equity can now be sold or borrowed.
Third Party Cooperation
As a registered trademark holder, you are more likely to receive the consideration of other parties in the protection of their rights. These third parties include:
- Other traders: You are not the only one protecting your rights. Once you are recognised as a registered owner, Google will take action against traders attempting to bid on keywords that contain your registered mark. In addition, Facebook can remove or reclaim usernames that potentially infringe on your registered mark.
- Customs: You can provide notice to the Australian Customs Service to prevent the importation of goods that potentially infringe on your trademarking rights.
Trademarking a name is a long and complicated process. For further information, or for assistance regarding trademarking matters, contact a trademark professional at Quick Off the Mark, we are always happy to attend to enquiries.
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.