A Business Name is different to a Logo. Simply registering a business name does not give you exclusive trading rights or ownership over that name. Trademarking the name is one step in the right direction, provided it is done correctly. Your Trademark Attorney should be able to help you with this. This is why you should always conduct a trademark search when developing your business name, just in case.
This could solve you a number of legal headaches in the future. Even better have a trademark searching expert go through the brand name comprehensively – you’d be surprised what they can come up with, and then how an Attorney can make it easy by determining whether there would be case for infringement, or not.
What’s the difference?
There is a substantial difference between what you need to do with A.S.I.C. to register your company or business and what you need to do when trademarking that business name. The two are separate parts of running a business. The former is a statutory requirement in order to operate a business, and you face significant penalties if you fail to comply. The latter is a choice, usually made before the business is established.
Registering your company with A.S.I.C. does not afford the Intellectual Property rights that trademarking does. So, whilst no one else can have the same or a similar company name, that’s really the only name protection afforded to you. Trademarking the name means you have proper rights over the use of the name, if a competitor or similar uses the name , they may infringe your intellectual property.
With a correctly filed trademark, you have specific rights for redress under certain pieces of legislation through the Federal and other Courts. If you are looking to sue under Intellectual Property principles, it’s best to consult a lawyer as this can be quite tricky to represent yourself, and you never know if the Trademark you have has legal issues or gaps that can be exploited against you.
Why trademark a business name?
Trademarks can be extremely valuable. Think the Nike tick symbol, instantly recognisable, but the logo and name are also assignable or can be licensed. Whether that is logos printed on a bag manufactured by one company and shoes manufactured by another.
Disney is also a perfect example of why trademarking a business name can be so important. Disney licences so much intellectual property that controls their market share. Many are movie, television series and toys from their films. Disney grants intellectual property licences for their characters, designs, and also items like the logo featured in their core brand castle theme.
Instantly recognisable, household brands, and at some point, at the inception of these companies, someone thought, I will trademark this.
Disney and Nike are just examples of well protected businesses who took the initial step to trademark their business logo, and name. These businesses may not have made it as far as they have if they hadn’t.
Trademarks are essentially marketing resources that separates your label or brand, and your products or services from those of your competition. Whether your business name is just the words, or contains the logo, or is of a specific font, these can all be trademarked to protect you. There is also discussion around how trademarks can increase the value of your business, simply by being registered.
When starting a business, you wouldn’t necessarily consider selling it in the future, unless that is your approach to start up a business for sale. Trademarks are also good selling points, as it shows your business is safe and secure.
Prior to Filing an Application
Prior to applying for a trademark and even before you decide on a business name, you should complete the appropriate searches of Business Name Registers, and as many trademark database as you can. You need to make sure there are no other businesses with the same or similar names to what you are looking to register. Once you’ve completed this, you should have an experienced Trademark Attorney conduct searches and check if you are legally correct with your results and interpretation. There is a substantial difference between business owner searches versus Trademark Attorney searches. The latter tends to be the only robust approach to substantially lower your risk of a conflict or Court action.
Only the true legal owner (as defined by the Trademark Act), can apply to trademark a business name. An owner can be an individual, a corporation, an association or any combination of the three where multiple owners are required. However an owner is not determined by being registered on A.S.I.C. The Owner of the trademark must also have, and keep up to date an address for service within Australia or New Zealand, otherwise it will be held invalid and can be removed.
You will also need high resolution graphics of the business name if you wish to also trademark the style of the business name and how its represented in the market.
Also good to have on hand is a description of the goods or services to present to your Trademark Attorney for checking. That way, your Attorney can ensure you haven’t left out or used inappropriate descriptions of your goods and services, and determine the correct class that your application should be filed in. Getting the class wrong can undermine your ability to enforce.
Ensuring you are registering within the right class can be a tricky and complicated process. Its also pertinent to note that once the application is submitted, you are unable to change or alter the classes your trademark is in; should you need to change the class for whatever reason. You will need to speak with an intellectual property lawyer about the next best steps for your situation.
Once submitted, your application then comes under review by one of the examiners at IP Australia. It will either be accepted and moved to the next stage, or rejected and sent back to you. Usually a report accompanies any rejection identifying the issues with the application, but it does not provide any legal advice or risk assessments that will be provided by your Attorney.
Rejections happen, the only way to avoid them is to ensure you have a quality specialist in Trademark law who does comprehensive research, and completes the application correctly. Sometimes, even that isn’t enough. There are a few common reasons for rejection of a trademark application, and they are usually where the logo or business name include prohibited signs, not distinctive enough, contrary to law, could deceive, or is identical to registered or pending trademarks.
Your application can take six to twelve months to complete from the moment you start your research until the acceptance and registration of the trademark. The scrutiny phase of the process can even take three to four months alone. Once the process is complete though, your business name is protected against misuse for a decade.
An Attorney can usually provide you with a comprehensive assessment of forecast in a week, thus saving you 12 months of wait time, and problems to sort out.
Once you have registered your business name in Australia, you can also look to register it overseas. Having the name trademarked in Australia helps with overseas recognition but only for a short time. Given the many boundaries and borders international recognition has, it may be best that a Trademark lawyer is given as early notice as possible to commence looking into it for you.