There are no intellectual property rights in a business name or a company name. Because of this, you may need to register a trade mark to protect a business or company name.
This article explores the concept of intellectual property as it relates to business names. Our intellectual property lawyer explains whether business names can be protected and how they can be protected.
Key Takeaways
Simply registering a business or company name does not create intellectual property rights.
The primary way to protect a name is by registering it as a trademark.
Trademark registration protects brand identity and prevents consumer confusion.
Unregistered names may still gain protection under passing off or Australian Consumer Law.
International businesses should consider global trademark registration via the Madrid Protocol.
Intellectual Property and Business Names
Intellectual property (IP) refers to creations of the mind. Intellectual property includes:
- inventions
- literary and artistic works
- designs
- symbols
- names, and
- images
The primary types of intellectual property are patents, copyright, trademarks, and trade secrets. Each type provides different kinds of protection, relevant to different types of intellectual creations.
Legal Tip: Business names and company names are not automatically intellectual property. To secure rights, they usually need to be registered as a trademark.
How to Protect a Business or Company Name
Trademarks: The Key to Business Name Protection
Registering a business or company name on its own does not automatically entail intellectual property rights. However, it can generally be protected as a trademark.
A business or company name often functions as a brand or identity in the market. Under intellectual property law, the primary method of protecting such names is through trademark registration. Registering a business name as a trademark can provide it with legal protection.
A registered trade mark prevents others from using a name that could be confusingly similar, and therefore protects brand identity and consumer perception.
A business name or a company name may include a word or phrase which is a trade mark and is therefore protected by:
- If the trade mark is registered, the Trade Marks Act 1995,the Australian Consumer Law and Common Law, and
- If the trade mark is unregistered, the Australian Consumer Law and Common Law (but not the Trade Marks Act 1995)
Trademark Registration Process
Registration of a business name as a trademark typically involves the following steps:
- Search and Clearance: Conduct a search to ensure the name is not already in use or registered by another entity
- Filing Application: Submit an application to the relevant trademark office. In Australia, trade marks can be registered through IP Australia
- Examination: The trademark office will examine the application for compliance with statutory requirements and for existing similar trademarks
- Publication and Opposition: The proposed mark is published in an official gazette, allowing others the opportunity to oppose its registration
- Registration: If there are no oppositions or if oppositions are overcome, the trademark is registered. This grants the owner exclusive rights to use the name in connection with the specified goods or services.
Passing Off and Unregistered Trademarks
Apart from registered trademarks, business names may also be protected under the common law tort of “passing off.” This legal doctrine is designed to prohibit individuals or companies from misleadingly presenting their goods or services as those of another.
Passing off requires demonstrating that:
- the claimant’s goods or services have acquired goodwill or reputation
- there is a misrepresentation by the defendant leading to confusion among consumers
- the claimant has suffered or is likely to suffer damage due to the confusion
While possible, passing off cases are costly and harder to prove than enforcing a registered trademark.
Frequently Asked Questions (FAQs)
Does registering a business name give me intellectual property rights?
No. Registering a business name with ASIC only allows you to operate under that name. It does not technically stop others from using similar names.
How can I protect my business or company name in Australia?
The most effective way is by registering it as a trademark through IP Australia. This gives you exclusive rights to use the name for your goods or services.
What is the difference between a business name and a trademark?
A business name is a trading name registered with ASIC.
A trademark is a form of intellectual property that provides exclusive, enforceable rights.
Can I take legal action if someone copies my business name?
Yes, but your options depend on whether your name is registered as a trademark. If unregistered, you may rely on passing off or Australian Consumer Law, but this is more difficult to enforce.
Should I register my business name internationally?
If you plan to trade overseas, you should consider international trademark protection through systems like the Madrid Protocol, which allows businesses to register in multiple countries.
At Prosper Law, we advise businesses across Australia on intellectual property, trademarks, and business law. Our online legal services make it easy to access expert advice wherever you are.
