A shop sign of a business

The key differences between business names and trademarks in Australia

By James Wan

What you need to know (in a nutshell)

  1. Business names and trademarks are not the same thing and serve different purposes.
  2. Business names must meet certain criteria for availability, including not being the same as or similar to a prior registered business name, not being undesirable, and not containing restricted words or expressions.
  3. A trademark must be distinctive and not be the same as or similar to a prior registered trademark in order to be available for registration

Full Article

It is a misunderstanding that business names and trademarks are interchangeable. This may be because people usually use the same words for all three: trademark, business name, and company name.

Registering a business name is mandatory when conducting activities under it. However, trademarks (which are words, symbols and other signs that customers use to identify or recall the business) have different registration requirements which provide them with specific rights and protections for their owners.

When can a business name be used and registered?

The Business Names Registration Act 2011 and the Business Names Registration (Availability of Names) Determination 2015 dictate how businesses must register their names. To be acceptable, they must meet three criteria:

  • Is the proposed name already registered with another business or company?
  • Is it unfavourable?
  • Does it have prohibited words or phrases?

Does the business name match any already registered?

When analyzing, certain words are disregarded as they cannot distinguish between two names.

  • Use of “a”, “an” or “the”.
  • Usage of terms such as association, cooperative, incorporated limited and pty.
  • Singular/plural words.
  • Fonts, casing, spaces, hyphens, punctuation & accents.
  • Acronyms or abbreviations.
  • Domain name indicators like “www”, “net”, “org” or “com”.

Also, some terms and words are recognised to be the equivalent of each other as per Schedule 1 of the Act. Examples include:

  • lodging, vacation lodging
  • B&B - Bed & Breakfast
  • Australia: Aussie, Aus, and Aust.

Companies with similar sounding names to registered businesses cannot be listed either. Examples include:

  • Dollar Shop and $Shop are the same.
  • Creative@Work is identical to Kre8tive at Work.
  • 100 Cats is equal to 100% Kats.

Schedule 1 of the Acthas a list of words or phrases that are accepted as equivalent despite visual and phonetic differences, in addition to different definitions. A few examples include:

  • Holidays, trips, travel service provider.
  • Ceramics, tiles, tiling services and solutions.
  • Body and Skin Care.

Names that aren’t desirable

Offensive or inaccurate monikers, such as those that suggest a connection to famous people/organizations, should be avoided. Examples:

  • Government of the Commonwealth
  • United Nations
  • Adam Gilchrist
  • Shane Warne

Restricted expressions or words

Words or phrases listed on Schedule 2 of the Act are not allowed. If certain consent from an appropriate authority is obtained, some words may be used. Examples include:

  • Charity, fire brigade, GST (Goods and Services Tax), guarantee, police force, RSL (Returned & Service League of Australia Ltd.), stock exchange and trust are all totally prohibited.
  • Government approval required for use of Anzac, Red Cross, Geneva Cross, United Nations or University.
  • Banks, building societies, credit unions may be accessed with appropriate approval.

Benefits of registering a business name

Registering a business name requires minimal paperwork and fees if an ABN is available. The process can be completed in one day as long as the desired name is still unclaimed.

A business name registration doesn’t give a company the right to use it or stop others from using something similar. The owner still needs to ensure that their proposed name is available, and investigations are needed whether they’re registering as a trademark or business name.

Is a trademark and business name able to be used and registered?

To make sure a trademark or business name is available for use and registration, searches must be conducted to guarantee that no similar trademarks have been registered in the same field of business. Searching IPAustralia’s database as well as ASIC records is only part of this process.

Additionally, it’s essential to look for any unregistered rights a common law owner may have from the usage of their trademark or business name in commerce.

The purpose of conducting trademark clearance searches is to make sure that using the proposed trademark or business name will not:

  • violate a previously registered trademark
  • provoke common law rights-based protests

Also, to check if the proposed trademark or business name can be registered.

Trademark registration provides robust protection, whereas business name registration is necessary to meet legal requirements

Registering a business name fulfills legal obligations, whereas registering trademark offers:

  • Reserving the trademark while business is being established and goods are prepared for release.
  • Exclusive right to use the trademark in Australia
  • Prohibiting others from using one’s registered trademark for their own products and services.
  • Registered trademarks can be defended against unauthorized use by competitors via infringement provisions.
  • A trademark registration is a property right and intangible asset that can be assigned, licensed or sold.

It’s good practice to consult a trademark attorney when deciding upon and registering business names, as well as your trademarks. This will ensure strong ownership rights with the registration of trademarks.