Legal Insights

Business names and brand protection

By Brendan Coady

• 06 December 0002 • 4 min read
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The move to a national system of business name registration provides a timely reminder for Australian businesses to take stock of their intellectual property assets.

The move to a national system of business name registration provides a timely reminder for Australian businesses to take stock of their intellectual property assets. Maddocks lawyer, Alexandra Gilbert, and partner Brendan Coady take a closer look at brand protection in light of the new business names registration regime and outline some practical steps for organisations to protect their IP assets.

The aim of business name registration is to protect consumers by enabling them to identify the particular business or individual they are dealing with. The Business Names Registration Act 2011 (Cth) (Business Names Act) creates a statutory obligation to register a trading name, however, it does not provide rights in a name. Where a brand name is material to a business, it is important to consider other means of protecting it. Business names do not provide rights in a name. Businesses may need to consider trade mark protection for material brands.

New system

Previously, businesses were required to register their names in each state and territory in which they were trading. Under the new system which commenced 28 May 2012, businesses pay one fee to register business names nationally. Particularly for businesses that trade in multiple jurisdictions, this will mean a reduction in registration costs and administrative hassle. National registration is intended to cut red tape and reduce the administrative burden associated with maintaining multiple registrations for a single name.

Current registrations should automatically transfer to the new register. Now that the system has commenced, ASIC is proposing to merge identical business names registered to the same business into one registration. ASIC proposes to notify the holder of multiple business names of any amalgamation of those registrations, however it has said it will be possible to maintain multiple registrations.

For companies with an existing business name registration, the integration of state and territory business names may have resulted in another company holding a national registration for the same name. The names will now co-exist and a distinguishing mark will be attached to the names on the register. This means that where there were identical names registered in different jurisdictions, the new arrangements do not require existing businesses to bear the cost of reissuing branded stationary or signage by mandating a name change. Where the same name is registered to different business name holders, all names will have national effect from 28 May 2012.

Are you operating under an unregistered trading name?

Under the Business Names Act, it is an offence for any person or company to carry on business under an unregistered business name. Unless an exception applies, trading names must be registered. If a particular name is already registered, it will generally be unavailable. Further, it is the responsibility of the business to ensure their business name does not infringe the rights of trade mark owners in Australia. Checking for trade marks is an ongoing responsibility of businesses as new trade marks are used and applied for continuously.

Is your brand sufficiently protected?

Where a business is going to invest time and energy into developing a brand, having that brand name registered as a trade mark provides the highest form of protection. The Trade Marks Act 1995 (Cth) confers protection on owners of registered trade marks against unauthorised use of trade marks which are associated with a particular category of goods or services. Business name registration will not provide protection over a material brand for a business. Where possible, businesses should have appropriate trade mark protection in place to protect key brands. Now would be a good time for businesses to consider an IP audit to consider whether their assets are appropriately protected. The new business name laws have not changed any of the existing law relating to trade marks or intellectual property in a name. Registration of a business name will not prevent someone using the name who has registered it as a trade mark.

What do you need to do:

  • Promptly register any trading names which are used by your business.
  • Develop a clear branding strategy and know the value of your brand.
  • Conduct an IP audit, including:
    - clearance searches to ensure you are not infringing someone else's rights in a name;
    - assessing the need to obtain trade mark protection for material brands and taking steps to do so where possible.

By Brendan Coady

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