Can you register your name as a trade mark?

1 July 2015
Posted by Jennifer

What’s in a name?

We often get clients (for example fashion designers and musicians) asking us whether they can trade mark their name.  So is it possible?

Distinctiveness

In order to trade mark any word (including a person’s name), it must be ‘distinctive’. For example, John Smith = undistinctive and Tutu Mancar = distinctive.

IP Australia has a surname database that can be searched to determine how common a name is in Australia. If the name returns a value of over 500, the name is likely to be found to be too common to be registered. Common Names cannot be registered, as this would unfairly prevent other traders from using that name in the usual course of their business. For example, if John Smith were granted protection for the trade mark ‘John Smith’s Bike Shop’, it would unfairly prevent all the other John Smiths of Australia from using their name in association with some kind of shop that may sell or services bikes.

On the other hand, had our principal called her firm Tutty Lawyers, she may have had some luck. On IP Australia’s surname database, the surname “Tutty” returns a value of 151. Therefore the chance that Tutty Lawyers would have been accepted was pretty high. Had she been called Smith, which returns a value of 114991, she would have had no chance.

Reputation and goodwill

If a person has built up substantial goodwill and reputation in their name, they may also be able to register their name. For example, Kylie Minogue owns the trade mark “KYLIE” in Australia for music related goods and services. While Kylie is a common name, the level of goodwill and reputation in the name Kylie is so considerable, that Kylie is synonymous with Kylie Minogue’s music amongst the Australian public. Given that she has established this goodwill and reputation, it would be confusing for another “Kylie” to be allowed to use that name within music related goods and services.

Using your own name as a trade mark

If you want to exclusively use your first or surname name in business (for example a fashion label, business brand name or a band name), here are a few simple things to remember:

• Do your research online – check to see if someone else is already using your name for goods or services similar to you.
• Ask Studio Legal to undertake a complimentary trade mark search to establish whether another trader has registered your name as a trade mark in the same or related classes of goods and services.
• If you have a common name, it may be difficult to register as a trade mark unless you have already established a considerable amount of goodwill and reputation in that name with respect to particular goods and services.
• Pseudonyms or made up “distinctive” names are often easier to obtain protection over (such as “Blue Ivy Carter”). So considering using your name with another word to add distinctiveness or mixing up your name with some made up words.
• Names combined with interesting logos/graphics are more distinctive than just plain text. Try engaging a graphic designer to come up with something unique and distinctive.

© 2012, Written by Studio Legal.  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

For more information on registering a trade mark, contact 03 9521 2128 or email hello@studiolegal.com.au.