International Business Articles
By Patricia Monemvasitis, Esq.
Carroll & O’Dea Lawyers
While there are no limits to the range of stimulating IP topics out there, there are also some more common topics that are often the most practically relevant to many readers. One such topic is business names, and how to register and protect them. This seemingly straightforward process can often harbour complexities that, when understood and utilised, can hold many benefits. In this post, we go through a selection of important considerations for registering and protecting a business name as part of your overall IP strategy.
Naming Your Business
So you’ve come up with a great business idea, in your mind you’ve crossed through all the details, and then in a marketing epiphany like no other you’ve conceived of the name for your business and you want that name more than anything. What do you do?
Painting that name in big bright letters all over your shopfront, car, or on every letterhead may seem like an emphatic way to name your business, but without proper registration that is a disaster waiting to happen.
First of all, unless the business name you have chosen happens to be your own personal name or that of the relevant partners of a partnership, using the business name without registering it is an offence under Section 18 of the Business Names Registration Act (2011) (Cth) which also defines “business name” as “a name” used, or to be used, in relation to one or more businesses”.
Secondly, you may be using:
a business name that has already been reserved or registered by someone else on the Australian Business Name Register (“Register”) operated by ASIC,
a trade mark already registered or pending to be registered in Australia on the register administered by IP Australia, and/ or
a domain name including one registered with the Australian domain name authority, auDA.
So before you invest valuable advertising resources or do anything else in relation to settling on a name, it is critical to ensure that the name you want to use for your business is available for registration and reserved or registered as quickly as possible. To find out whether the name you want is available for registration as a business name a search on the Business Names Register operated by ASIC is required and can be conducted free of charge online.
Additionally, to find out whether the business name you want is being used as a domain name a search of the WHOIS register of website addresses or domain names maintained by the Australian domain name authority, auDA is required and can be conducted free of charge online.
Registering a Business Name
If the name you wish to register as an Australian Business Name is available, you can proceed to registration. Click here to view registration page.
To be able to register a Business Name, you will need to have an Australian Business Number (ABN) or be in the process for applying for one, ABNs are processed by the Australian Business Register and applications can be submitted online, or on paper, without charge. For companies, an ABN application will require that you have an Australian Company Number (ACN) or Australian Registered Business Number (ARBN) prior to applying. An ACN or ARBN can be obtained through a separate registration process with ASIC (all the ACNC if you are a charity).
Once you have an ABN, you can create an online account with ASIC and make an application to register an Australian Business Name. For this you will need to provide ASIC with the following details:
Name and date and country of birth of the relevant individuals within the business (e.g. the individual sole trader, directors of the company or partners in a partnership or joint venture);
Email address for service of notices
Address (a physical street address – not a mailing address).
An address for service of document which can be either a street address or a mailing (postal box address).
Finally, you will need to determine the period for registration and pay the prescribed fees.
Protecting Your Business Name
So if at last you managed to get through all of the above and you are holding proudly your Business Name Registration Certificate you can start legally using the registered name in the conduct of your business. Yet, even though you have obtained the registration of your Business Name, it does not therefore mean that you own it! This might come as a surprise – after all what was all that registration stuff about? Well, the fact is that the benefits of a registered business name mostly end at the point of being able to use it. There are no proprietary rights in a Business Name Registration and this means that if someone else starts to use this name for their product or in their advertising or even if they are using it online from another country your registration of this name as a Business Name cannot, on its own, legally stop them. Moreover, by continuing to use the name they may even be acquiring proprietary rights in that name despite your business name registration.
This is why it is critical to protect the business name with registration as a trade mark. Words including names (as well as logos, words in logos, graphics, sounds, smells, and aspects of colour) can be registered as Trade Marks under the Trade Marks Act 1995 (Cth) if formal requirements for registration are met. Of course some business names may face difficulties
with trade mark registration if for example the business name is descriptive or generic in relation to the goods or services in respect of which the trade mark is being used and proposed for registration, or if another trader has already registered a name identical or deceptively similar to your business name as their trade mark for a same or similar class of goods or services. For these reasons, it is recommended to consider the choice of business name in light of trade mark registrability to get the complete picture of the intellectual property stock for your business. The above problems relating to generic and/or descriptive name and/or conflict with another trade mark may however sometimes be overcome depending on the circumstances. Yet, if at the outset of choosing a business name, these issues are considered, a lot of cost an disruption can be avoided.
You should also raise an objection to the use of your business name by another entity in writing as soon as you become aware of this. Failing to do so could be interpreted later on as permission by you to use the business name which could affect your rights in the business name and brand that it is attached to.
And Not to Forget the Internet of Things
Finally, in today’s online world, your business name might just need a place on the web. And this is where a registration of a domain name becomes important. Just like a business names register, the Australian domain name authority, auDA, keeps registry of all website addresses or “domain names”. The registry can be searched to ascertain availability for the domain name for a potential business name and ensuring that both the business name and domain name are concurrently secured. The trade mark registration can also be used to protect the domain name just as with the business name.
Be Thoughtful and Prosper
As seen, the registration of a business name involves a number of procedural steps which if taken in the right order and without complication of availability, can be a fairly straightforward affair. When it comes to effective IP protection for your business though, a more targeted and holistic IP strategy can make a world of difference so it is worthwhile to make the prudent choice and investment in your IP early on.