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Capitalise on your "brand"

Intellectual Property Law News | March 2016

Deciding on what company or business name and/or the brand [“Name”] under which you would like to begin trading can be more complicated than simply picking a name and opening for business. Even after you have decided on your preferred Name, it is possible that somebody else in the market is either already using either that exact name or something significantly similar. Similar-sounding names can cause confusion in the marketplace and this may detrimentally or beneficially affect the owner of the Name. In many cases any application for similar sounding Names are rejected by the authorities. For this reason, before you begin trading under a Name, you must ensure that it is available to be registered with the Australia Securities and Investment Commission [“ASIC”].

Protect your name by registering it as a trade mark

There is a common misconception that registering a Name with ASIC will provide you with exclusive rights to the use of that Name and will prevent other traders in the market from using the Name in respect of their own goods or services.

Protecting and enforcing your rights in a Name can be achieved by applying to IP Australia to register the Name as a trade mark. This will provide you with statutory rights which are intended to prevent others in the market from using or registering a trade mark that is the same or substantially similar to yours.

Some important considerations when deciding on a Name to operate under and register with ASIC and IP Australia (as a trade mark) include:

  • Is your preferred Name (or something significantly similar) already in use by someone else in the market?
  • Does your preferred Name sufficiently describe your goods and/or services in such a way that it differentiates them from those of other traders in the market?

Where your preferred Name is likely to be considered to be too generic or required for use by others in the market, you may wish to consider:

  • Whether, based on your reputation in the market, consumers are likely to associate the Name with your goods and/or services; and
  • Would you like to register a [graphic] logo in your distinctive colours and style containing the Name as a trade mark with IP Australia to protect and enforce your rights in the Name?

Passing off: know your common law rights

You may also be entitled to rely on common law rights where you have used a Name for a long period of time and another party has engaged in misleading or deceptive conduct, or has attempted to "pass off". Passing off occurs when someone has used your Name, brand or goodwill, or has used a name that is deceptively similar to yours, in an attempt to misrepresent to the public that they have some kind of an association with your business or your goods or services.

More information about registering a Name or trade mark, or setting up a business or a company is in our September 2014 article on this topic.

Forum Law has extensive experience and is well equipped to advise and assist you setting up your business or company and protecting your interests in the assets of your business, which include your intellectual property rights. Contact us on (02) 9560 3388 for an obligation free telephone discussion or to arrange a 30-minute free consultation to discuss any concerns you may have about protecting your brand.

Forum Law is an active member of several reputable law and industry associations. We have recently obtained ISO9001 accreditation.