Should I Trademark my Business Name?

If you are using your business name as a trade mark in the marketplace, you should register that trade mark in our view. In other words, are you using your business name as a badge of origin or a brand for your goods or your services? If yes, trade mark registration should be considered.

Trade mark registration, assuming successful, provides you as the owner of the trade mark the right to use the name. Business name registration does not provide this to you necessarily. Further, registration of your business name as a trade mark will give you the right to take steps against others found to be infringing your rights in that trade mark. Again, without trade mark registration you may not be able to prevent others from using similar names.

We’ll use “JB Hi-Fi” as an example. This is a registered business name, and it is used ‘as a trade mark’ such that the owners have registered it accordingly. They clearly use the business name as a brand and badge of origin. If you go to their website, you can see they’re using it. And if you go into a retail store, you’ll see a huge sign that says “JB Hi-Fi” and that is their trademark for the retail services and other services and goods that they provide.

If you use your business name in similar ways (e.g. as a brand to promote your goods/services) then  absolutely you should register it as a trademark if you are indeed using it as a trade mark. It’s very important to understand that registering a business name does not provide ownership to that name or any intellectual property protection to the name. We understand there’s often confusion around this, as most people think by registering the business name it’s providing the right and safety to commence using it also as a ‘brand’ for the business. Be mindful too that these days when you register a business name with ASIC you are required to confirm you’ve read a checklist before even starting the application online, which includes a confirmation you understand your business name does not provide ownership and that trade marks should be considered.

In some cases, a business name is not used as a trade mark and in which case it may not be necessary to register the name as a trade mark. For example, if your business name is used purely for identification purposes and not to distinguish your goods or services from others you may not need to register your business name as a trade mark.

For example, if you went to an accountant and at the bottom of the invoice or at the bottom of the letterhead, they have their business name (for example “Smith & Associates”) but there is a different brand at the top of the letterhead, for example, “Smith’s Rad Accounting” along with a that would be the thing that they are using as a trademark. Whereas the business name down the bottom is simply a business name; there so that clients can identify who they’re doing business with. That’s not necessarily being used as a trademark in that context.

Another example might be in the field of software. You may not see the business name itself on the software product, rather developers may create unique and distinctive names/brands for their software goods. If you look at apps available for download, the brand or name of the app itself is likely to constitute ‘trade mark use’, which could be different to the business name of the developer behind the software. So in that example, they’re not using their business or company name as the trade mark for the software app.

We are noticing less and less situations where people use a business name purely as a business name. It’s certainly more common in our experience, particularly with our small to medium size clients, to see the business name being used as a trade mark as well, such that we’d encourage registration.

If unsure if you should register your business name as a trade mark, the easiest way to picture it is to ask yourself “Do I use this business name as a brand for my products and/or services” and if you answer yes, then you should consider trade mark protection for that name. If you answer no, then consider whether you do have trade marks that are different to your business name.

Certainly, if you want exclusive rights to the use of your business name in your sector of product or service trade mark registration will be key to obtaining those rights – keeping in mind that overly descriptive or generic names are unlikely to be accepted for registration/protection. Keeping with the above example, Smith & Associates for accounting services would be challenging, if not impossible to register as a trade mark as it does not meet the fundamental definition of a trade mark – i.e. that the name possesses enough distinctiveness to distinguish the services of one trader from another. Smith is such a common surname, you would have to prove that “Smith & Associates” can/does distinguish your accounting firm from any other run by a person with the name Smith in order to gain an exclusive right.

Still unsure if you should register your business name as a trade mark – contact us today and we are happy to help figure it out.

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