Top Legal Tips for protecting your new business name

9 September 2011
Posted by Jennifer

Before launching your new business, take a minute to consider whether your business name is sufficiently protected.

It is important to understand:

1. That by registering a domain name, business name or company name, you do not acquire an exclusive right to own or use your business name. A third party may start trading under your business name six months later and in reality you will not have many options to stop them from doing so.

2. If someone has already registered your business name as a trade mark or registers your business name as a trade mark after you start trading, they will have superior legal right to your business name and may be able to prevent you from continuing to use your business name in the future (unless you have been trading for a few years and have considerable reputation in the name throughout Australia).

So how do you best protect your name?

A registered trade mark is the most effective way to protect your name. A trade mark can be a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these. The owner of a registered trade mark has an exclusive monopoly right to use, license or sell it within Australia for the goods and services for which it is registered.

How do you get one?

Before you choose and finalise your business name, we recommend that you undertake a trade mark search in Australia to make sure another party has not already registered that name as a trade mark.

If it appears that no-one else has registered your name, then we would highly recommend that you apply to register your name as a trade mark in the classes of goods and services that you trade in. There are 45 classes of goods and services to register your trade mark and you have to pay a fee for each class.

Some common classes for the entertainment, fashion and creative industries are:

Class 42 – design services, fashion design services, IT services

Class 41 – entertainment services, music services, production services, festival services, video production

Class 35 – Business, advertising, marketing, promotional, social media services

Class 25 – clothing, footwear, headgear

Class 16 – printed material, photographs, graphics, artwork, banners, flyers, publicity material, books, tickets, posters

Class 14 – jewellery

Class 9 – CDs, DVDs, Digital Downloads, Video, Film

Can my business name be trade marked?

It is important to be aware that some business names cannot be trade marked. The trade mark office will not let trade marks be registered if other traders need to use those words in the usual course of trade.

Here are a list of names that can generally not be trade marked:

– surnames (i.e. Smith’s Chips)
– geographical names (Melbourne Dance Club)
– trade marks that refer to a time frame (i.e. ready in one hour)
– names that emphasis the worth of a product (i.e. worth their weight in gold)
– names that describe the function of goods or services (i.e. the Excellent Vinyl Shop)

The more distinctive, the more likely your trade mark will be able to be registered (for example the words ‘Left Records’ would be more distinctive if used in combination with a picture of a turn left road sign).

How long do trade marks last?

Once your trade mark is registered, you will have exclusive rights in the name in Australia for a period of 10 years. You can renew free of charge for further 10 periods too!

What if I want to trade overseas? Will my Australian trade mark registration cover international trade?

No, trade mark law operates on a territorial basis. So if you wish to perform and sell records as a band in the USA, you should strongly consider trade mark registration in the states as well as Australia.

There is also a system of international registration called the Madrid Protocol which allows you to register your trade mark in multiple countries. Not all countries are party to the Protocol and you cannot simply nominate all countries (unless you want to pay around $50,000 application fees).

What can I do to protect my business name if I cannot register my name as a trade mark?

Here are some things you can do:

– Make sure no-one else is using the name before you start using the name (check google, band registers, trade mark registers, business and company registers, domain name registers)

– Use a band register

– Establish a reputation in the name (for example by performing or trading in a lot of different cities, getting music or performances on radio and television, getting as much press as possible, sign with a label or manager, set up a good website, get a publicist, post on forums, put your music and videos on youtube and digital retail sites)

If someone copies your business name and you have created goodwill and reputation in the name, you may have a case against the other party under the law of passing off or under trade practices laws for misleading and deceptive conduct. These claims are hard to prove and expensive to run however, so best not to rely on them if you can register a trade mark.

To summarise the benefits of having a registered trade mark:

• you have a relatively easy and cost efficient legal action against infringers using the same or a similar trade mark for related goods and services

• you can sell your trade mark or licence third parties the right to use your trade mark (as it is a real asset)

• a trade mark is on the public record, so third parties who search the register are more likely to be deterred from adopting it or a similar sign

• is a complete defence to any claim of trade mark infringement brought by another trade mark owner.

For further information on registering your business name as a trade mark and the costs involved, please contact enquiries@studiolegal.com.au or phone the office 03 9029 8424.

Written by Jennifer Tutty (C) 2011. Republished 1 July 2015.

DISCLAIMER

The information in this article is of a general nature. It does not constitute formal legal advice, and should not be relied on as such. Please see the full disclaimer in our website terms. Please contact Studio Legal if you are seeking advice about a specific legal matter.

Contact hello@studiolegal.com.au or call us 03 9521 2128 to find out about how we can help you protect your brand name through trade mark registration.  We offer one complimentary search and initial advice.