Business Names, Company Names, Domain Names, and Trade Marks
The growth of global trading, advertising and the Internet has increased the importance of business identifiers such as Business Names, Company Names, Domain Names and Trade Marks. However, it has become apparent that confusion exists in the business community as to the nature of the rights, if any, associated with each identifier.
Business Names, Company Names, Domain Names, and Trade Marks are four different designations that serve separate functions within the business environment. Registration of each of the aforementioned, grants the owner distinctly different privileges. As a general rule business, company and domain name registrations do not provide the owner an exclusive right to use the name.
Not only is it often mistakenly believed that business and company names grant proprietary rights analogous to those conferred by trade mark registration, it is at times thought that business, company and domain names offer a form of immunity from infringement of a registered trade mark.
Unlike the registration of a trade mark, neither the registration of a company name nor the registration of a business name of itself provides proprietary rights in the use of that name.
Without registration as a trade mark, a business or company name is unprotected.
Domain names should be also be registered as a trademark in order to protect the domain name more effectively. Domain name disputes are increasingly being settled in favour of trade mark owners. The World Intellectual Property Organisation (WIPO) recommends that even if the domain registration is prior to a trademark registration, a related dispute should be resolved in favour of a trademark holder.
Procedures for Trade Mark Registration
To register a trade mark an application must be made to the Trade Marks Office which is part of IP Australia, a Commonwealth Government agency.
A fee must accompany the application. The application is examined by the Trade Marks Office to ensure that it complies with the provisions of the Trade Marks Act 1995. Please note this process may be accelerated if it is able to be shown that there are commercial imperatives for early examination.
If the application does not comply with the Act a report will be sent to you, the applicant, stating why the Trade Mark is not capable of being registered. However, an initial refusal does not necessarily mean that the trade mark is not able to be registered. A Trade Marks Attorney may be able to successfully argue against the initial refusal by providing further evidence of its eligibility.
How Long Does the Registration Last?
A Trade Mark registration lasts for 10 years. It can be renewed indefinitely by payment of renewal fees.
Search
It is recommended that before adopting a new business name, company name, brand name, logo or trade mark a comprehensive search be conducted of the Australian Trade Marks Register in order to ascertain whether proprietary rights in the proposed name currently exist.
The Role of a Trade Marks Attorney
A Trade Marks Attorney is a person who is experienced in providing clients with assistance in the protection and exploitation of trade marks and associated rights. Trade marks attorneys must be registered to practice under the Regulations relating to the Trade Marks Act 1995.
Some of the specific fields in which Trade Marks Attorneys are competent to provide assistance to clients are:
- applying for and securing the registration of trade marks in Australia and overseas;
- searching appropriate data bases to advise on the use and registration of trade marks;
- assisting in the licensing and assignment of trade marks;
- assisting in the conduct of trade mark litigation in Australia and overseas.
- Registered Trade Marks Attorneys enjoy the right of privilege in their communication with their clients in intellectual property matters.
For further information
Please contact
Sherrie Heather
Principal
Trade Marks Attorney Services
Tel: +61 8 93679972
© Sherrie Heather 2004. This information sheet is the property of Sherrie Heather, Registered Trade Marks Attorney. The article contained herein is for information only and is not to be construed as comprehensive legal advice.
