We’ve noticed that in the recent past there seems to have been an increase in the number of accountants who have been struck with issues created by their assistance in the setup of business name and companies, where those names have subsequently had issues with potential infringement allegations, or have simply been difficult names to get trademark protection for.
Part of the issue seems to arise from a common confusion between the concept of business and company names versus trademarks. And from the perception of many accountants, that since ASIC has allowed a name, that the name in question comes without risk of use.
We’ve written about the differences between trademarks and business names before, which you can find here. In this article, we examine some of the risks in this space.
Does my client need a business name or a trademark registration?
The answer to this question is that they need both. As you know, if your client chooses to trade under a name that is not their personal name, then it must be registered as a business name. A trademark registration is optional in terms of compliance with legal requirements, but importantly if a trademark registration is obtained first without having secured the corresponding business name, complications can arise, especially if the exact business name that corresponds to the trademark becomes unavailable.
So you should check the business names register to ensure that the trading name is available BEFORE you consider and settle on a corresponding brand name. BUT before you settle on a business name, you should also have a trademark search completed to ensure that it’s available as a trademark before you settle on a business name. A business name registration together with a trademark registration provides your client with the best protection for their name, and also provides them with the right to use the name.
Why should I check that the name is registrable as a trademark?
Essentially, you need to ensure that the name that your client has chosen is registrable as a trademark to ensure that it’s not infringing the rights of any other trademark holder that already owns a registered mark on the trademarks register. Further, you should consider if the name is one that is sufficiently distinctive so that it’s likely to be able to obtain a trademark registration. Also, a distinctive mark has the advantage of being one that is easier to stop a competitor from copying. We’ve written about how to choose a name or brand that can be protected before, which you can find here.
So it’s not as simple as doing an ASIC search and then registering a business or company name. Instead you should have a proper search of the trademarks register done so that your clients aren’t at risk of infringement actions, and consider properly whether they are using a name that is capable of registration as a trademark. And of course, this is best done before the name is bedded down, before clients have begun to spend money using, marketing and building up the goodwill in the name. Because at the end of the day, you don’t want clients coming to you to complain about the problems they’re having with a name that you helped them to setup.
We provide a number of concept searching, trademark search and trademark registration services, so don’t hesitate to contact us if you would like some assistance. Alternatively if you would just like to discuss the area of business names, trademarks, or general intellectual property, then feel free to call at any time on 02 8003 0860, or email us at [email protected].
Disclaimer: The material contained on this website is provided for general information purposes only and does not constitute legal advice. You should not depend upon any information appearing on this website without seeking legal advice. We do not guarantee that the contents of this website will be accurate, complete or up-to-date.
