2/10/13: Business name no defence to trade mark infringement

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A common misconception is that registering a business or company name gives you a right to use it in any manner you desire.  This is not the case.  If your business or company name infringes on another party’s trade mark, then they can prevent you from using it and also seek damages.

It is easy to see how this misconception arises. Suppose Isabella decides to start a new business and decides on the name BONZA FUNCTIONS for her catering company.  She then diligently registers the business name, gets an ABN, sets up a website and starts getting customers.   By registering the business name, she has complied with government regulations and the government even issued her a business name certificate which must be displayed at her business.

Now suppose that Grande Agro Pty Ltd is a large, full service functions and entertainment company that has a registered trade mark in Australia  for BONZA covering services including catering.  By virtue of its registered trade mark, Grande has exclusive proprietary rights on the name BONZA (or similar) for catering services, and it can enforce those rights against Isabella.

This is because registration of a business name is not a proprietary right, but rather permits a party to operate their business under a name other than their own.  It is no defence to trade mark infringement.  In a case involving a similar situation to the above, the Federal Court said that:

By duly registering the business name “Lonestar Saloon”, Ms Zurcas avoided contravening s 5 the Business Names Act 1962 (Vic) but this did not give her a “right” to carry on business under that name, let alone a right to do so in infringement of the trade marks of others (Lone Star Steakhouse  & Saloon Inc v Zurcas [2000] FCA 29)

The lesson is to be aware of the differences between trade marks, on one hand, and business, company and domain names on the other hand to ensure you take the most informed course of action for your business.

TRADE MARK

Used to distinguish your goods or services from those of other traders. When you register a trade mark you obtain exclusive use of the trade mark throughout the Commonwealth of Australia.

BUSINESS NAME

A business name is the name under which your business operates. Registration identifies the owners of the business. Registration is compulsory in every state and territory from which a business operates, and must be completed before the business starts trading.  It does not, however, provide exclusive rights.

COMPANY NAME

A name of the separate legal entity.  You must register your company name with the Australian Securities and Investments Commission(ASIC). If you wish to trade using a name other than your registered company name, you must register that trading name as a business name.  Like a business name, does not, in itself, provide proprietary rights.

DOMAIN NAME

Every website and page needs its own identifiable and therefore unique address – this is a domain name.  The rules and policies for registration of domain names in com.au may be viewed at the .au Domain Administration Ltd (.auDA) website.  Like a business or company name, does not, in itself, provide proprietary rights.

Can business, company or domain names be registered as trade marks?

Yes.  You can apply to register your business, company or domain name as a registered trade mark so long as it meets the requirements of the Trade Marks Act 1995.

October 2nd 2013 |

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