5 Trade Mark Myths Busted

One of the most common misconceptions people have is that registering your brand name as a business name with Australian Securities and Investments Commission (ASIC) gives you exclusive rights to that name.

Myth 1 : Registering your brand name as a business name gives you exclusive rights to that name.

Suppose you want to trade under a particular business name in Australia. In that case, you do have to register that name with ASIC. However, the business name registration doesn’t give you exclusive rights to that name.

You can’t easily prevent other businesses from using the same or similar name to a name you have registered as a business name in respect of the goods and/or services you provide. To do that, you need a registered trade mark.

Just remember that the converse is true, too – just because you have a registered trade mark doesn’t mean that you don’t need to register your business name with ASIC. You are legally required to register a business name if you carry on business within Australia and are not trading under your own name. The exception is if you are an already registered Australian company and your trading name is the same as your company’s name.

Myth 2 : Your .com.au domain name is required to be identical to your registered trade mark

In an ideal world, you’ll find the perfect name for your business, and it will be available to register as a trade mark and purchase as a domain name. But this isn’t always the case. With the recent changes to the .au domain licensing requirements, there has been some confusion about whether your domain name must be identical to your registered trade mark.

If you are an Australian business, there are several ways that you can meet the eligibility requirements to register a .com.au or .net.au domain name. For example, the domain name can be an acronym of your company or personal name, a match or synonym of the goods or services you provide or a match of your Australian trade mark. The licensing rules define a “match” as being identical to one, some or all of words or numbers used in the person’s legal name, business name or Australian trade mark. The domain name must use the words or numbers in the same order as they appear in the person’s legal name, business name or Australian trade mark and must not include any additional words or numbers except for articles such as ‘a’, ‘the’, ‘and’ or ‘of’; commercial status identifiers such as ‘Pty Ltd’; DNS identifiers such as com.au; punctuation marks and ampersands. This means, for example, that if you register the trade mark “Golden Age Skincare” for a premium skincare range you will be selling, you can license the domain name “GoldenAge.com.au” or “skincare.com.au”

Suppose you are a foreign business using an Australian trade mark as the basis for meeting the Australian presence requirement. In that case, the name you choose must be an exact match to the words you have registered as a trade mark. In the example provided above, you would only be eligible to licence the domain “goldenageskincare.com.au”

Myth 3 : IP Australia or some other official body will monitor for trade mark infringement

Having a registered trade mark gives you exclusive rights to use that trade mark concerning your goods and/or services and the right to prevent others from using the same or similar trade mark in relation to similar goods and/or services. But if someone infringes your registered trade mark rights, there is no central body you can make a complaint to – you have to enforce those rights yourself. This also includes actively monitoring the market for infringement of your trade mark.

Myth 4 : You cannot apply for a trade mark for goods and/or services unless you are already using it 

You indeed have to actively use your trade mark in the course of trade if you want to maintain it. However, you can apply to register a trade mark you genuinely intend to use in the future in relation to specific goods and/or services. This is helpful as you may have plans to expand your range of goods and/or services and want to make sure that the trade mark is protected in relation to those goods and/or services in due course.

There isn’t a set time period. You should just be aware that another party can apply to have your trade mark removed if you are not using the trade mark in the course of trade for any specified goods and/or services after a period of 3 years from the trade mark being registered.

A party can also apply to have your registered trade mark removed if you have no genuine intention to use the mark in future. This prevents businesses from registering trade marks they don’t intend to use just to prevent a competitor from registering the mark.

Myth 5 : With a registered trade mark, you have exclusive right to that name in relation to all goods and services

Registering your trade mark gives you the exclusive right to use, license and sell the mark in relation to the specific goods and/or services it is registered for. This means, generally, no one else in Australia can commercially use the same trade mark, or a very similar one, for the same goods and/or services you have it registered for.

However, it doesn’t prevent another trader from registering and using the same or a similar trade mark in relation to unrelated goods and/or services. For example, a manufacturer of vapes may register the trade mark “Puffer”. They are unlikely to be able to stop another business that sells down jackets from registering the trade mark “Puffa”.

Another thing to remember is that when your registered trade mark is descriptive, you won’t be able to stop a competitor from using it to describe some quality of their goods or services. So, suppose you are able to register the trade mark “Top Plumber”. In that case, you won’t be able to stop another plumber from advertising their business and describing themselves, for example, as Sydney’s top plumber.

Contact us today for your trade mark and brand protection needs.

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Brigit Rubinstein
Brigit Rubinstein

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