Is your business name really protected?

One of our clients recently rebranded her business, and in the process changed its name. Her accountant had diligently registered a new business name for her. Unknowingly, she’d chosen a name similar to a competitor’s name – but it was different enough for ASIC to allow both registrations. Inevitably, the competitor threatened legal action.

This is a common problem we encounter. More often than not, it’s followed by:

“ASIC accepted the registration, so I’m in the clear, right?”
“I have an extra two words in my name, how can that infringe?”

Simply put, business name registrations do not provide protection. They don’t give exclusive rights to use the name and are not a defence to an infringement claim. They are an administrative step required if you want to trade under a name that is not a company name or your personal name.  There are two key points to remember.

1. Do not rely on your business name registration for protection.

ASIC only prevents someone from registering a new business name if it is ‘identical’ or ‘nearly identical’ to a name that is existing. Here is a recent example.

In 1999, B & L Whittaker registered the business name “Cairns Concrete Pumping”. Last year, a competitor applied for the business name “Cairnscrete Pumping”. Whittaker sought to prevent the registration and requested a review.

ASIC and the Administrative Appeals Tribunal found that the business names were not identical, and both were registered.

2. Do not take a business name registration as clearance you won’t infringe third party rights.

Obtaining a business name registration is not clearance – use of the name may still infringe someone else’s rights. There are other rights that trump a business or company name registration, the main one being the rights obtained by registering a trade mark.

Example: ASIC does not consider the name ‘adidas’ to be identical or nearly identical to ‘adidas Melbourne’ or ‘adidas t-shirts’, meaning these business names are up for grabs. Quite clearly, someone could not start selling T-shirts under ‘adidas t-shirts’, even if they had a business name. Adidas would rely on its extensive trade mark registrations to prevent use of the name.

If you want protection for use of a name, you should file a trade mark. It’s the only registration that will give you the exclusive right to use a name and the ability to prevent another party from using it. The test for similarity in the trade mark space is broader than that applied by ASIC, so a registration can also deter businesses looking to enter the market with a similar name.

Case: B & L Whittaker Pty Ltd and Australian Securities Investments Commission and Anor [2014] AATA 302

For more information contact:

Emma Mitchell
Senior Associate
Harwood Andrews
T: 03 9611 0140
E: emitchell@harwoodandrews.com.au

Jeremy Weeks
Associate
Harwood Andrews
T: 03 9611 0159
E: jweeks@harwoodandrews.com.au