I recently highlighted some of the issues faced by businesses
when other businesses have a similar name -
Using a Generic Brand Name – It's a Double-Edged
Sword, where Tim Bishop, the owner of 'MAN WITH A VAN,'
has had to take legal action to stop others from using the business
name or variations of it.
Well, an update to the Business Names Registration Rules is
about to make life a lot easier for business owners like Tim. The
update is perhaps best explained by the famous lyrics from the Ella
Fitzgerald song "Let's Call the Whole Thing Off."
"Potato, potahto, Tomato,
The Business Names Registration (Availability of Names)
Determination 2015 kicked in on 17 July 2015 and sets out the rules
for determining if a business name is identical or nearly identical
to another name. These rules aim to reduce the risk of the public
being misled by nearly identical business names.
Subsection 5A of the Determination provides that a business name
is identical or nearly identical to another name (other than a
company name) if, and only if:
After comparing the business name with the other name
(disregarding certain matters and applying others) the names are
the same; or
the business name is pronounced the same as another name
despite being spelt differently. For example: "Dollar
Shop" is the same as "$ Shop."
What matters are not considered?
The following are some of the matters to be disregarded when
comparing whether two business names are identical or nearly
Use of "Association," "Co-operative,"
words in a pural form and singular form will be treated as the
the size of the letters, the type and case of the letters, any
accents, spaces between characters and punctuation marks
the order of the words as they appear in the two names. For
example: "Rita's Shoes" would be the same "Shoes
domain name extensions such as ".net" or
What matters are considered?
Under Subsection 6(1) any word or expression in an item in
Schedule 1 of the Determination is taken to be same as each other
word or expression in the item. Examples of the items contained in
Schedule 1 are as follows:
Bicycles, bikes, cycles
caterers, catering, catering services.
The Determination should be welcomed with opened arms. Not only
does it reduce the risk of confusion between two companies, it
makes it harder for another business to adopt a nearly identical
name to yours, taking advantage of the existing reputation and
goodwill your business has (as experienced by 'MAN WITH A
VAN' and countless other businesses).
If you're starting a business, choose your business name
carefully - and only after you've done your due diligence.
Identical or nearly identical names should be avoided for two
reasons: firstly, you'll improve your chances of obtaining
business name registration but secondly, also make sure your
proposed name doesn't infringe any registered trade marks.
In short, when it comes to "Potato, potahto,"
you're far better calling the whole thing off and coming up
with something uniquely yours.
If you're unsure whether your proposed business name is
capable of registration or whether your proposed business name
infringes a registered trade mark, you should you obtain legal
advice as soon as possible. Invest time and money in choosing the
right name so as to avoid the need and costs associated with an
infringement action or re-branding your whole business:
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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