While most companies know that they need to register their company name, not all company, business name or domain name - owners are aware that the best protection of their rights is through a trade mark registration.
Company names, business names and domain names do not give proprietary rights as such, although they do provide limited legal protection. For example, no-one in Australia can register a company or business name that is identical to an existing company or business name, although variations with, for example, additional words, may be able to be registered as either a company or business name.
The registration of a company name allows the company to use the name as an unregistered trade mark and it gives common law protection. This means that if anyone uses the name for the same or similar goods and/or services provided by your company or business, you will be entitled to legal action against the infringer. In order to succeed you will have to establish prior use of the mark and demonstrate that its use by a third party is confusing, misleading or deceptive in the market. This process can be time consuming and expensive.
In contrast, a registered trade mark provides the owner of the trade mark with prima facie legal protection and the exclusive right to use the trade mark in Australia, as well as the ability to stop others from using the registered mark.
Furthermore, the owner of a registered mark has the ability to sue a business name owner if that business owner is using the name for goods or services similar to the ones for which the trade mark is registered. Registration, in and of itself, has the consequence that owner of the registered mark is not required to prove use, confusion etc. in the market.
The broadest protection for company names, business names and domain names are to be registered as trade marks. If you would like to know more read about our experience in creating and protecting intellectual property or get in touch for a confidential, no obligation discussion about your situation.
8 November 2011