The only way to stop someone else from using a business name or logo that is the same as yours is through registering a trademark.
Protecting your business from deliberate or mistaken intellectual property theft is crucial. Many people do not realise that registering a business name is different from registering a trademark. Registering your business name is a legal obligation, as it differs from the name of the legal entity that owns the business. However, registering your business name as a trademark is a separate choice you can (and should) make in order to protect your brand from someone else using it.
Registering a trademark protects others from using the goodwill in your brand that you have created through the good work you have done for past clients. For example, it is important to register a trademark so that clients do not mistakenly go to another business’s Facebook page that might be using your name.
Case Study
I had a call a while ago from a lady who had just heard from a supplier that another business with a remarkably similar name was opening a few doors down from her shop and had ordered a similar product range. Her business name was not registered so nothing we could do at this stage. We quickly registered her name as a trademark and when this is registered will seek to prevent the other business from using the name. Registering a trademark was something she had been thinking of doing but not got round to.
It is possible to register a remarkably similar business name through ASIC as another operating business – e.g. The Contracts Lawyer vs. The Contract Lawyer. This will inevitably cause confusion for customers, suppliers, etc. and could negatively impact the positive perception of your brand through no fault of your own.
Registering a trademark is the only way to stop someone else from using a similar business name.
It should also be noted that registering your business name as a trademark gives you the widest form of protection, compared with registering your business logo (even if the logo contains your business name). It stops anyone using your business name within their name or logo (in your designated class(es) of goods and services).
Once you have completed the trademark registration process you will own the right to use the registered word, phrase or letters in relation to the classes of goods and services in respect of which it is registered. This applies across the whole of Australia. The benefits include being able to serve a cease and desist letter on other businesses using the name. You can also sell a registered trademark, making it a valuable asset when selling a business, and it can be reflected on the balance sheet. Furthermore, you can license your trademark or franchise your business, which can be financially advantageous.
Did You Know…
A TM symbol on a brand indicates that said brand is currently an unregistered trademark, however, the owner is in the process of registering it. Whereas the ® symbol means the mark is a federally registered trademark. ® trumps TM.
How to register a trademark?
The good news is that registering a trademark is relatively inexpensive and easy to do. A commercial lawyer or trademark attorney can complete the registration on your behalf. Alternatively, if you would prefer to do it yourself, there is a five-step process on the IP Australia website, currently costing $330 per class. You can use the trademark assist tool on the IP Australia website to help determine whether your name is ‘trademarkable’, as well as search for existing trademarks. You must be unique. You cannot simply trademark the term “Great Lawn Mowing”, as commonly used descriptive terms are unlikely to be accepted for registration. You must determine the class or classes of goods and services in which you will register your trademark. There are 45 separate classes and it is possible to register in multiple classes (each charged individually). For example ‘plumbing services’ fall within Class 37 however ‘bathroom installations’ fall within Class 11.
To help you decide what goods or services to list think about the exact nature of your business and ask yourself the following:
What is the nature of your business?
What are you best known for by your customers/clients?
What products or services does your business provide?
A helpful tip when applying is to use the pre-application service known as TM Headstart. This provides an initial assessment of your application before you officially apply using online services. With TM Head start the payment is split. The Part 1 fee will cost $200 per class, followed by a $130 fee per class in Part 2*. *Prices correct as of July 2020.
The results from the initial assessment of your application should only take around 5 days. This may save you money, as the examiner’s report will determine if your trademark is likely or unlikely to be registered before commencing Part 2. Therefore if it is deemed unlikely you may decide not to pay the next part of the fee to a full determination. The entire process will take approximately 7 months under Trademarks Act. Therefore, by using TM Headstart you are also saving time, rather than waiting many months before finding out your application has been denied.
Further Protection
There are structural changes you can make to your business to ensure the maximum protection of your intellectual property and assets, for example, you could set up a company and family trust and appoint the company as corporate trustee of the trust. In addition to this, your intellectual property can be held in a company other than the operating entity. The owner of the intellectual property could then grant an intellectual property license to the operating company. This way, your intellectual property is separated from the main operating company.
Please contact me if you require any further information on registering a trademark or any other commercial legal issue.
Related article: How to Overcome an Adverse Report from IP Australia for a Trademark Application
