Launching new products, services or businesses
So, you’ve decided on a new business, new product or service and prepared your business plan. Before you launch your business, there are a number of naming issues that need care.
First, you need to make sure that the business name you want to use is available and legally safe to use. You can check this by doing a business or company name search. ASIC and the department for fair trading in your state or territory is a good starting place. Once you’ve done your business name search, you can also apply to register your business or company name there.
But don’t be fooled. Most business owners make a simple assumption here that can run you into trouble: that upon registering a business or company name, the business owner acquires a right to use that name and has some kind of ownership of it.
Unfortunately, it’s not that simple. All a business and company name does is identify the owners with that name rather than giving any ownership rights or entitlement to use it.
Name selection
If the business or company name is available, you should also make sure you can use it.
This can be done by checking the Trade Marks Office records. The Federal Government has a trade marks database that can be searched. However, you should always get a professional to do this because searching is a specialist skill and if you don’t know what you are looking for, you could run into difficulties.
Essentially, not only is it a trade mark infringement to use a name as a trade mark that is identical to one that is already registered for the same or similar goods or services, it is also an infringement to use a name as a trade mark that is deceptively similar to an existing trade mark registration.
A professional will be able to perform a detailed search of the Trade Marks Office database to find out whether your name is one that might infringe an existing trade mark.
If you get clearance on the name from a trade mark search, is it then safe to use the name?
Maybe - but not always. There is one other risk.
Unregistered names still have rights
There are many names in use in commerce that are not registered but which nonetheless receive the protection of the law. There are two different types of laws that apply.
First is the common law of passing off. Put simply, the law of passing off is aimed at preventing a person from attempting to benefit from another trader’s reputation by conducting their business in a way which falsely suggests an association or connection with the other trader or their goods or services.
Second is Federal and State laws known as consumer protection laws. These laws restrict the use of names that are misleading or deceptive or likely to mislead or deceive consumers.
So, how do you search unregistered names?
Searching unregistered names is not easy because, of course, there is no easily accessible database.
The best way is to know your market – do as much research as possible. A professional such as an intellectual property lawyer can also help, by arranging searches of state and territory business names, ASIC names, telephone books and other references relevant to the industry of your proposed business.
Once a thorough search process has been carried out, if the results are clear then it’s usually safe to use the name.
But there’s one more important thing you should do – protect the name.
Trade Mark Registrations
Provided your selected name is distinctive and just not descriptive of your product or service, it is registrable as a trade mark.
The registration process is relatively simple and inexpensive, and a trade mark can be a valuable asset to your business.
Registering a trade mark gives the owner the exclusive right throughout Australia to its use for the goods or services for which it is registered or for similar goods or services. It therefore also gives the ability to stop other traders from using trade marks that are too close to yours.
There are 45 different categories in which your trade mark can be registered and it’s important to get the description and category correct to ensure the best possible protection.
Again, an intellectual property lawyer can help with the process of applying for and registering your trade mark.
But if you don’t bother with a trade mark registration, what are the consequences?
Trade mark registration is not compulsory, but when you register you let other people know of your trade mark and they will know not to use trade marks that are too close to yours. If someone does use a trade mark that is too close to yours, you also have a better ability to stop that use.