Australia: New Federal Register of Business Names
A Federal register of Australian business names is due to make its debut on 28 May 2012, subject to harmonizing state legislation being put in place. It will consolidate and provide for the demise of the respective existing state registers and be administered by the Australian Securities and Investments Commission (ASIC).
By: Kevin Ashby, Principal IP Strategies International, Patent Attorneys
What it means to traders is that there will be a lot of duplicated business names on the consolidated Federal register: These could lead to conflicts between previously non-competing business owners, some of whom may have been unaware of each other’s presence. Some commentators suggest that name conflicts can be resolved – or even avoided - by traders applying to register their business names as trade marks.
This is not necessarily the panacea, as a business name is not automatically a trade mark: To be a trade mark, it has to be used as such, that is to say, for identifying your products, be they goods or services, with your business. However, registration of your business name as a trademark does bring unmistakeable strategic advantages.
For example, suppose you have been using the registered business name FGH in WA for the past 10 years as the name of your services business, and someone else has registered it as a business name in Queensland and has similarly been using it (in Queensland) for the last 3 in respect of the same kind of services as yours. Under the new system, both your names will automatically be entered on the new Federal register as proprietors of that business name. Now, if the Queensland user applies for registration of FGH as a trade mark, you, as the prior user of the mark, would have prior trade mark rights at common law. Even if the Queenslander were able to convince the Registrar of Trade Marks to accept his application for registration, you would have the concurrent right to continue using it in your business and in your local area. The problem is, if you wished to expand your business to a wider geographical area, or in relation to different services, you may not be able to, in the face of the Queenslander’s trade mark registration. You may still be able to use FGH as your business name, but if you were to use it in relation to your services in the expanded areas of your business, you would have to take into account the risk of infringing the other’s registered trade mark. Remember: A business name is not necessarily a trade mark.
In summary, the Johnny-Come-Lately who uses and registers his business name as a trade mark is potentially able to restrict the rights of an earlier user of the same name as an un-registered trade mark to the geographical area in which that trader had been using the common name as her trade mark. This means too that if the trader – let us suppose she had registered the business name in NSW - had actually only been operating in a NSW regional centre, such as the town of Orange, she would not be able to claim trade mark rights to the Sydney metropolitan area.
One may argue that this represents the situation that has existed until now anyway. True, the trade mark laws have not changed. But with the new register comes the heightened risk that traders will become aware of competing businesses in other states and may seek to jump in and enforce their perceived rights.
What should you do? Check the existing business names registers for others with the same name. “Google” (or “Bing”) your business name; check the telephone directories and trade directories in other states and regions. Check the register of trade marks for recent additions / applications that could conflict (you should be doing all this on a routine basis in any case).