What is a trademark? Simply put, a trademark is a sign that has the ability to alert consumers that products or services belong to a particular person or company, and distinguish one business’ goods and services from another.
Registering a business name is not enough to protect your brand. It’s true a business name registration ensures that you are not operating under exactly the same name as another registered business. However, even if you register the name of your business, you cannot stop others from using it without applying for trademark registration. Further, having a business name registered is not a defense to infringing the trademark rights of another party.
trademark law can be confusing, so if you are trying to wrap your head around what action you need to take, here are some common questions trademark attorneys get asked by clients.
If Someone Else Has a Business Name Similar to Yours, Can You Still Register the Name as a trademark?
Before you file a trademark application, you should conduct a variety of searches of Australian trademarks databases, and of the marketplace. These searches will reveal whether or not your mark is available for registration.
Once your trademark application has been filed, IP Australia will conduct an examination of the trademark register to determine whether another party has an earlier filed trademark application or registration that is too similar to the one you are trying to register. IP Australia will also ensure that your trademark is sufficiently distinctive to be registered. They will not conduct marketplace searches to see if others have accrued unregistered/common law rights. So, if the other business with a similar name has not applied or registered their similar name for goods or services like yours, nothing is stopping you from registering the name as a trademark for your own business ventures.
Unfortunately, once you file a trade make for registration and it has been accepted, you may find that a third party lodges an opposition. They have a two-month window of opportunity to put file a notice of an intention to oppose if they believe they have grounds to lodge an opposition to your application. In some cases, the other party will be able to stop you from using the business name if they can prove that they’ve been using it before you.
If you encounter a third-party opposition it is best to speak with a trademarks attorney to obtain advice based on your situation.
How Can You Protect Your Business Overseas?
If you have an existing trademark in Australia, you could consider filing an international application with the World Intellectual Property Organization (WIPO). WIPO governs an international registration system that allows you to file a single application and nominate any member of the Madrid Protocol. There are approximately 100 member countries to choose from using this type of international application.
If a country is not a member of the Madrid Protocol or you are not eligible to use that system you may still be able to protect your trademark overseas by engaging local attorneys to act on your behalf in the filing of national applications.
How is Will Registering a trademark Help My Business?
Registering your business name, company name, logo, or other distinctive sign as a trademark gives businesses a sense of security that their work is protected. Business owners have peace of mind knowing that they are entitled to use the name/logo or other sign, and, by knowing they have the right to take steps if a competitor starts using a confusingly similar trademark.