Australia: Can I trademark my business name?

In short - yes you can. A trader should trademark a business name because it provides the right to exclusive use, added protection from competitors, increased value of brand and goodwill as well as adding value to the business itself.

It is a common misconception that registering a business name is a good way to prevent others from using that name. Accordingly, registering your business name with ASIC is not enough to protect your rights to a name.

Trademark registration is a relatively inexpensive and effective way to achieve protection of your business name. Upon registration, trademark owners are afforded a bundle of rights relating to ways in which they can use the mark to the exclusion of others. This includes the right to exclusively use the mark in Australia to brand your goods or services, licence or assign it as well as the right to take legal action against other traders whom make unauthorised use of your mark.

So what should you do?

Step 1: Check whether the name you're looking to use is already in use.

This can be done through a series of searches by a trademark professional to see if another trader is using this trademark.

Step 2: Ensure that your trademark meets the eligibility requirements

A trademark must have three things:

  1. it must be a sign (i.e. a word, phrase, letter, number, sound, smell, shape, logo, picture or packaging your business uses to represent its products and/or services);
  2. it must be used (or have an intention for use) in trade and commerce; and
  3. is capable to, and does, distinguish your product from another.

Your trademark is something that is able to distinguish a product from something else (e.g. a word like Mercedes – this is referred to as a 'word mark') or a 'device mark' is a logo or some sort of graphical representation (e.g. the Nike swoosh).

This means if your trademark uses commonly-used descriptive terms, phrases or images it may not be accepted for registration. Signs such as words or images which are ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin (e.g. STRAWBERRY for drinks or WARM for heaters) will be difficult to register as trademarks.

Step 3: Pick the right class

There are 34 goods classes and 11 service classes. You need to nominate one or more appropriate classes for your trademark. This is an important decision to make because competitors can use your trademark in other classes that you have not occupied. As there is a fee for each class registration, it is important to enlist the assistance of a trademark professional.

Step 4: Ensure your trademark is filed in the name of the correct legal entity

A trademark needs to be used by the registered owner or an authorised user. There are several traps and technicalities related to use that can affect the validity of your trademark. It is very important to speak to expert on these issues.

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Award-winning law firm HopgoodGanim offers commercially-focused advice, coupled with reliable and responsive service, to clients throughout Australia and across international borders.

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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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Verity Stone
Steven Hunwicks
Briar Francis
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