The Name Game…..

Imagine spending thousands on signage, websites and emails to find out that you cannot use any of it?

What about if someone decides to copy you? Is the business you have been building protected?

Ensuring your ownership over your business name and brand is a simple process when starting a business. Taking these measures to protect your business name can save you time, money and headaches in the future.

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Key take-aways:

  • All businesses in Australia must have a registered business name unless trading under your own legal name
  • Registering a business or company name is not the same as a trademark
  • A trademark affords the highest level of brand protection

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Understanding your legal obligations and how to protect your assets and intellectual property is an integral part of establishing your business. Let’s start with a break-down of the different types of legal obligations and measures to protect your business name:

BUSINESS NAMES

If you are looking to trade under a name that is not your personal name, you must register your name with the Australian Securities & Investment Commission (ASIC). It is an offence to transact business under an unregistered name, unless it is your legal name.   

It is a regulatory requirement to register your business name, and ASIC maintains a public index of all registered business names.

If you have decided on a business name, you can check on the ASIC website to ensure the name you want is available. The availability of a business name is based on a few factors:

Checking Availability

The Business Names Registration Act 2011 outlines the rules for registering a business name. Business names can only contain certain characters, and the complete list is outlined on the ASIC website. Also, if you have invented a new word for your business, your application may need to be manually reviewed.

Three key areas may make a business name unavailable:

Already registered

Firstly, you should check that the name is not identical or nearly identical to a name that is already registered to someone else.

If the name is spelt differently but pronounced the same, such as ‘Kr8’ and ‘Create’, these are considered too close. If ‘Kr8ive Kids’ is registered, ‘Creative Kids’ will likely be unavailable.

However, don’t assume that similar business names can’t be registered:

In Perth Martial Arts Academy and Australian Securities and Investments Commission[2018] AATA 3664 (28 September 2018);The Administrative Appeals Tribunal (AAT) upheld the right to register the name “Perth Martial Arts Centre”, even though the name “Pert Martial Arts Academy” was already registered.

The AAT upheld the business name registration on the basis the names were not similar enough to prevent registration.

Cannot register an ‘undesirable’ business name

Secondly, the name cannot be considered ‘undesirable’ for registration. If your name is likely to be offensive to members of the public, it could be rejected as undesirable.

If your name suggests a connection to an entity where there is not one, that could also be deemed undesirable. For example, ‘The Brisbane Tax Authority’ infers a government agency, not a private accounting firm, and could be rejected.

It cannot contain restricted words

Finally, your name can not include any restricted words or expressions. Examples of restricted words are ‘Charity’, ‘Incorporated’, Co-operative’, ‘Bank’ and ‘University’. If these terms apply to your business, you may need permission to use these words.

TRADING NAME

Trading names were replaced with the National Business Names Register, which commenced on 28 May, 2012.

The Australian Business Register (ABR) is used to collect trading names of entities. However, trading names don’t meet the requirements of a registered business name. Your registered business name or company name should be the name that you transact business under.

COMPANY NAME

If you have set your business up as a Company, you will need to register a company name with ASIC. Your company name may be the same or different from your business name. Similar to a business name, your Company name must not be identical or nearly identical to existing business names or companies.

Registering a company with ASIC makes your business a separate legal entity.

A company may choose to register a business name if it wants to carry on a business using its name without the legal terms or if it intends to use a different name.

TRADEMARKS

When registering your business or company name, you do not have an automatic trademark. Registering your name with ASIC is a legal compliance step designed to create transparency around business ownership and competition.  Having a business or company names does not readily prevent others from using a similar name or copying your business brand.

Registering a trademark is a fundamentally different process administered by IP Australia. Trademarks may also be used for protecting logos and slogans, not just business names.

Trademarks are a propriety right, which means it gives you legally enforceable ownership of the trademark. A trademark gives you exclusive rights over your business name or logo. Businesses wanting to protect their brand, reputation or prevent customer confusion may even consider registering multiple variations of their business names.

Trademarking your business name lasts for ten years from the filing date. In brand protection terms, a trademark is overwhelmingly more valuable than a registered business name.

Applying for registration is time critical and it is best to apply well before there is an issue. If you become aware that a competitor is trading under your name or a similar name, it may already be too late to gain the full benefits of trademark protection, however you should seek legal advice immediately.

DOMAIN NAMES

Owning a business name does not automatically give you the right to the matching web domain, even if you have trademarked your business.

.au domains are regulated, and to apply for a .au domain (such as ABCwebsite.com.au), you need to have an ABN or hold an Australian trademark.

It is also worth noting that:

  • You can register domain names similar to your business to avoid future confusion or a competitor securing it; and
  • If someone is using the domain you wish to use, they may be willing to sell you the domain name as a private transaction.

You should note that domains are purchased for a set amount of time, typically from a domain name provider. Like your business name, you will need to renew your domain.

FINAL CONSIDERATIONS

If you are considering setting up a new business or have an existing business or brand you would like to review, have a chat with our team who specialise in commercial law. We can make sure you are compliant and protected.

NB Lawyers – Lawyers for Employers undertake and offer an obligation free consultation – we are happy to help. 

Reach out via service@nb-lawyers.com.au or +61 (07) 3876 5111 to book an appointment. 

If you got value from this article, email service@nb-lawyers.com.au or click on this link to subscribe to our value-added newsletter.  

Written by

Daniel Dash
Senior Associate
NB Lawyers – lawyers for employers
danield@nb-lawyers.com.au
+61 (07) 3876 5111

And

Zahra Rashedi
Lawyer
NB Lawyers – lawyers for employers
zahrar@nb-lawyers.com.au
+61 (07) 3876 5111

Daniel Dash and Zahra Rashedi are part of the commercial law team at NB Lawyers – lawyers for employers working with individuals and business owners on a range of matters including business sales, property disputes, estate disputes, shareholder agreements, intellectual property, litigation and taxation matters

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