So, you think you ‘own’ your trading name?  Well, you probably don’t have proprietary rights!

….So registering a trade mark is the answer.

People often mistakenly think if they have a business name or a company name, that they have ‘ownership’ rights in that name.

Business names and company names enable members of the public to identify the party with whom they are trading but they do not confer proprietary (ownership) rights that are enforceable against third parties.  This means that if you have a company name or a business name you cannot prevent other people from registering or using similar names unless the following situations apply:

1. You have a registered trade mark for your business name or company name in respect of the same or similar goods or services to the other party;
2. You have established a significant reputation in your business name or company name and you can take legal action (if relevant legal elements are satisfied) for: 
   • Misleading or deceptive conduct; or 
   • Passing off.

The disadvantage to issuing legal proceedings for misleading or deceptive conduct or passing off is that you will likely incur significant legal fees in proving that you have established a reputation in your name.

Conversely, if you have a registered trade mark, you can issue legal proceedings by simply relying on your trade mark registration rather than having to prove that you have established a significant reputation in your name or brand.  This is a much more cost-effective way of protecting and enforcing your trading name or brand.

Trade marks are often a very valuable asset of a business.

Key takeaway

If you wish to prevent any third party from trading under a name that is similar to your business name or company name, the best way to do this is by registering a trade mark.  

If you have any queries or concerns regarding trade marks we can help you with the following: 

• Applying for trade marks in Australia and internationally;
• Advising on whether names or bands are likely to be registrable as trade marks including conducting availability searches where requested; 
• Dealing with trade mark objections by IP Australia;
• Dealing with trade mark oppositions by third parties;
• Handling trade mark infringement matters including litigation and notification to the Australian Border Force (Customs);
• Preparation of trade mark licences and licences of other intellectual property;
• Preparation of documents for the transfer of trade marks or other intellectual property; 

We have extensive experience in handling trade mark matters.  Please contact us at office@alphaco.com.au or on (03) 9548 5500 if you have any trade mark or other legal queries.