As featured in the most recent edition of Club Insight Magazine
Whether you are seeking to re-brand, introduce an additional brand or concerned about your existing brand or intellectual property rights, you must consider your legal position to protect your business. In this article, we touch on some of the things you should be consider to achieve this.
Due Diligence
Whenever you are considering new branding, you should always conduct preliminary searches and checks to ensure the desired branding is not already in use (including whether it would infringe on existing trademarks) or that there are no other issues associated with that branding such as stigma, association etc.
In addition, you should ensure the branding is otherwise compliant with legal requirements, does not mislead customers, is not offensive and whether you are impacted by specific regulations (such as those that apply to your industry).
Registering a Business Name
A business name is the name your business operates under, often referred to as a trading name. You are also required to register a business name if you conduct business under a name other than your company name or legal name. This process is completed with the Australian Securities and Investment Commission (“ASIC“). Please note that registration of a business name does not:
- Give you the exclusive right to use the name or any part of the name;
- Prevent another person from registering a similar name;
- Offer protection of a name or brand like a trade mark;
- Prevent somebody who has registered the business name as a trademark from using the name or taking legal action to protect their trademark.
Business Name vs Trademark
Despite registering a business name with ASIC, this does not give you any proprietary rights in the name, which can only be obtained through the registration of a trademark. The proprietary rights provided by a registered trademark will allow you to prevent other entities from using the same or a similar trademark, as you have the benefit of the protections afforded by the Trade Marks Act 1995 (Cth).
This means that if you want to take action in the event of any trademark infringement, you do not have to prove reputation, and you do not have to rely solely on misleading and deceptive conduct under Australian Consumer Law or the tort of passing off.
Registering a Trademark
A trademark is a registered mark that is used to distinguish your business from other products and services. A trademark can be a letter, number, word, phrase, logo, image, sound, movement, shape or scent and will give you exclusive rights to your business name in Australia.
If you find an existing trademark similar to yours, it may be possible for both trademarks to coexist if the goods and services they relate to are different. The process of registering a trademark is completed with IP Australia and takes about eight months (however, this can be delayed if there are objections from the trademarks office or third parties).
A trademark works on the basis that you must use the trademark to promote your goods/services, or risk having the mark removed from the register. You should ensure that the trademark/s which you apply to register will continue to be used in relation to the goods/services claimed. If the trademark/s are not used, others may apply to have your trademark/s removed, even after registration.
Registration is valid for ten years from the date of the application and can be renewed for consecutive ten year terms.
Please note that an application to register a trademark in Australia will only cover the trademark for use in Australia. Separate applications will be required to protect the mark offshore if required.
Registering Domain Names and Social Media Handles
You should ensure you register all relevant domain names and create all social media handles before you launch your brand to avoid any disputes with a third party that has already registered your desired domains and social media handles or is trading under your new brand.
Updating the OLGR
If you are operating a licensed premises and changing the name of the premises, you must inform the OLGR of your new trading name so that your licence can be updated accordingly.
If you want to register a business name, update a business name with the OLGR or register a trademark, it is vital to seek the necessary legal advice. Please contact me on 07 3224 0353.
