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Names, such as trademarks, brands, logos, domain names, business names or company names

How can a trademark, business name, company name or domain name help my business?

Your trademark, business name, company name and domain name are among the most valuable assets of your business.

When your customers want to find you, they will look for your names. When a new customer tries your product or service, and wants to buy it again, the customer will look for your names.

If you introduce a new product or service, customers will try it because of the reputation of your other products that they already buy.

Recognisable trademarks and other names help you achieve:

  • repeat business
  • new business
  • greater earnings and profits.

Your names represent the largest part, or sometimes the only part, of the goodwill of your business. A new business that needs to get recognition in the marketplace and develop goodwill will gain that recognition and goodwill through its name.

While you are developing recognition and goodwill, and when you achieve it, you will not want:

  • a competitor to 'free ride' on your reputation, and use your goodwill, by using your name or a similar name
  • a person, whether a competitor or not, employing your name, or a similar name to confuse the marketplace, whether intentionally or unintentionally, thereby possibly damaging your reputation and goodwill.

Trademarks, business names, company names and domain names are a part of a branding strategy that may include other things such as packaging, jingles, music, catch phrases, personalities, etc.

What is a trademark?

A trademark can be registered for any of the following:

A trademark can beExamples
An ordinary word Shell, Crown, Sunshine
An invented word Google, Toyota, Starbucks, Caltex, Coke, Microsoft, Kit Kat
A phrase 'Lonely Planet', 'Intel Inside'
Letters GE, BP, BMW, HP
Numerals 4711 (a perfume)
A person's name Tommy Hilfiger, Levi Strauss
Shape Qantas' flying kangaroo, a bottle of Coca-Cola, Shell's shell
Colour BP's distinctive green
Sound Intel's distinctive musical notes, MGM's lion's roar
Scent Eucalyptus Radiata scent for golf tees
Movement Mars's M&M character; Toyota's leaping person

What are the differences between trademarks, business names, company names and domain names?

Type of nameWhat is it used for?Do I need to register it?
Trademark

A trademark is used to identify a product or service in the marketplace and to distinguish it from other products and services.

A registered trademark must specify the types (or classes) of goods and services in relation to which it is used.

No, but it is prudent to do so.

A registered trademark enjoys the protection of the Trade Marks Act 1995 (Cwlth), as well as the protection of the general law.

An unregistered trademark can be protected by the general law only.

Business name

A business name is a name that is used to identify a business, not a product or service.

A business name is the name that the legal entity that owns the business will use to promote the business.

The legal entity that owns the business may be:

  • a person, who is described as a sole trader
  • a number of people, described as being in partnership
  • a company, which will usually have the words 'Pty Limited' (or some variation) at the end of its name.

If one of these types of legal entities wants to call its business something other than its own name, it must register a business name. For example, the Audio-Visual Copyright Society Limited trades as Screenrights.

If the legal entity that owns the business trades under its own name, a business name is not necessary.

It is possible to register a trademark that is the same as a business name, but their different registrations are to achieve different objectives:

  • Registration as a trademark is to brand a product or service.
  • Registration as a business name is to identify the legal entity that owns the business (and may have many products and services).

Yes.

The National Business Names Register is administered by the Australian Securities and Investments Commission.

Company name

A company name is the name of the type of legal entity that will usually have the words 'Pty Limited' (or some variation) at the end of its name.

A company that wants to call its business something other than the company's own name must register a business name.

A company does not need to register a business name if it uses its own name.

A company name identifies the legal entity that owns the business, as distinct from identifying its products and services.

It is possible to register a trademark that is the same as a company's name, but their different registrations are to achieve different objectives:

  • Registration as a trademark is to brand a product or service.
  • Registration of the company name is to identity the company legal entity (which may have many products and services).

Yes.

A company name is registered when the company is registered with the Australian Securities and Investments Commission.

Domain name

A domain name is an internet address. Domain names let an internet user visit a specific website.

As a part of a branding strategy, it is very common for a domain name to be the same, or similar to a trademark, a business name, or a company name, but these different registrations are to achieve different objectives:

  • A domain name is registered so that there is an internet address.
  • A trademark is registered to identify a product or service.
  • A business name is registered to identify a business that wishes to trade other than with its own name.
  • A company name is the name of a specific type of legal entity.

Yes.

There are a number of Australian domain name registries.

If I register a business name do I need to register a trademark?

Business names and trademarks serve quite different purposes:

  • Registering a business name is a legal obligation, if you choose to identify your business with a name that is different to the name of the legal entity that owns the business.
  • Registering a trademark is a choice you make as part of a branding strategy for your products and services.

You could use your business name as an unregistered trademark, but that would not give you the benefits of a registered trademark.

The differences between a business name and a trademark are described below:

QuestionRegistered business nameRegistered trademark
Can I use it to identify my business? Yes No. You need a registered business name
Can I use it to identify products and services I sell? As an unregistered trademark yes, but without the benefits of a registered trademark Yes
Can I own it, so that it is my property? No Yes
Can I stop someone registering a similar name or mark? No Yes
If I have a registered business name can I stop someone who has registered an identical trademark? No Not applicable
Do I have a legal obligation to register? Yes, if you identify your business with a name other than the business's legal name No. You may choose to register a trademark as part of a branding strategy

What are the benefits of registering a trademark?

The registration of a trademark confers a number of advantages over the use of an unregistered trademark.

Ownership

You can 'own' a registered trademark. That is, you own the right to use the registered word, phrase or letters etc. in relation to the classes of goods and services in respect of which it is registered. Registration is proof of ownership. You cannot own an unregistered trademark.

Sale

Because a registered trademark is an asset, you can sell it. You cannot sell an unregistered trademark.

Gift by will

Like any other property that you own, you can make a gift of your trademark in your will.

Licensing

You can license the use of a trademark. Generally, it is harder to license an unregistered trademark.

Balance sheet

Because a registered trademark is an asset, a trademark that is acquired can have its value reflected in its owner's balance sheet. An unregistered trademark cannot easily be reflected on a balance sheet.

Rights across Australia

A registered trademark operates throughout Australia. This means that when a registered trademark owner pursues an infringer, the registered trademark owner need not prove its business reputation across the whole of Australia, since the trademark registration operates Australia wide.

In contrast, an unregistered trademark user will have to prove its business reputation for each part or region of Australia in which it wants an infringer stopped.

Criminal offence

The improper use of a registered trademark is a criminal offence, unlike the improper use of an unregistered trademark.

Customs assistance

The owner of a registered trademark can obtain the assistance of the Department of Home Affairs to seize foreign shipments of goods that bear fraudulent or deceptive trademarks.

Pursuit of infringers

An owner of a registered trademark can pursue an infringer without having to prove its business reputation, or to prove there has been misrepresentation or deception.

If a user of an unregistered trademark wants to pursue another user free riding on its reputation, it has to prove its business reputation, and misrepresentation or deception.

Should I register a trademark or use an unregistered trademark?

The following factors may influence your decision to register a trademark.

FactorDeciding whether to register a trademark
Are you about to launch a new a product or service that you need to protect by creating and protecting market recognition? The launch of a new product or service is the optimum time to also launch the product's or service's trademark. If the trademark is registered it will deter competitors from seeking to 'free ride' on your launch and your marketing efforts.
Is your intended trademark the same as or similar to an already registered trademark? Have you undertaken a trademark search with IP Australia to see if it is possible to register your trademark?
Are you aware of the cost of registering a trademark? A fully informed decision about whether to register a trademark can only be made if you are aware of how much it will cost to do so. Visit IP Australia's website to get the latest information on the fees applicable in registering a trademark. Be aware that there is an additional cost for each class of goods and services in which you decide to register. If you engage a trademark attorney, be sure to ask what professional fees will also be payable.

What are the requirements for registering a trademark?

Trademarks that cannot or may be hard to register

The following types of names might be difficult to register, or simply cannot be registered as trademarks:

  • a person's surname, if it is a common name
  • a word that is descriptive of products or services, such as 'organic', since everyone should be entitled to use that description
  • a trademark that is deceptively similar to a registered trademark or one already applied for
  • names that are protected and are therefore not available, such as 'Olympic'.

Trademarks that are easiest to register

A trademark that is an invented word will be easiest to register. Examples are: Google, Toyota, Starbucks, Caltex, Coca-Cola etc.

A trademark that is a common word, but is applied to identify unrelated goods and services will also be easier to register. Examples are: Apple (used in relation to computers); and Shell (used in relation to petrol and oil products).

Use or intention to use

To register a trademark, you must already be using it as an unregistered trademark, or intend to use it.

If you register a trademark and do not use it, this will be a ground for the cancellation of its registration.

Classes of goods or services

When you apply to register a trademark, you must nominate the class or classes of goods or services that will be identified with the trademark.

There are 45 classes under the International Classification of Goods and Services for the Purposes of the Registration of Marks, and you are able to nominate one or more classes in which you intend to use the trademark.

How do I register a trademark?

Where do I register my trademark?

To apply for the registration of a trademark, you must file an application with IP Australia.

You can file the application online or download a paper application from IP Australia's website. You can also engage a trademark attorney to file the application on your behalf.

What happens after I file my application?

After the application is filed, the application is examined.

The trademark examiner considers whether there is compliance with all the requirements of the Trade Marks Act 1995 (Cwlth).

After that examination process, in Australia, the application is accepted and is published in the 'Australian Official Journal of Trade Marks'.

Other parties have 3 months to seek to oppose or challenge the registration of your trademark.

After a successful examination, if there is no opposition or challenge, your trademark is registered. Or, if there has been opposition, after the trademark examiner's decision is affirmed, your trademark is registered.

How do I register my trademark in other countries?

No 'worldwide' trademark registration is currently available.

A trademark is registered by a government of a country.

The Australian Government, for example, does not have power to register a trademark that would apply in the United States. Nor does the United States Government have the power to register a trademark that would apply in Australia.

Applying for registration in other countries

There are 2 ways of applying for registration of a trademark in other countries. You can either:

  1. file a separate application in each country where you decide to pursue registration, or
  2. file an application under the Madrid Protocol, and in due course nominate those countries where you want to pursue registration.

It is not mandatory to file a Madrid Protocol application.

You can file the application online from IP Australia's website. You can also engage a trademark attorney to file the application for you.

The advantage of a Madrid Protocol application is that it is a single application in English to IP Australia, instead of a separate application for each country in that country's language. This makes the application process less expensive, and simpler.

In practice, you would consider registering a trademark in those countries where you anticipate:

  • selling the products or services related to the trademark
  • exporting the products or services related to the trademark
  • licensing the products or services related to the trademark.

What are my rights as a holder of a registered trademark?

Initially a trademark is registered for 10 years.

Registration can be renewed for successive 10 year periods, subject to the payment of renewal fees. As there is no limit to the number of renewals, it is possible for a trademark to be registered indefinitely.

As a registered trademark holder you have the right:

  1. to obtain a court order (injunction) to stop a competitor unlawfully using (infringing) your registered trademark
  2. to grant a licence to another person (e.g. in other parts of Australia, in other industries, or in other countries) to use your registered trademark, in return for licence fees, royalties, or other payments
  3. to sell your trademark
  4. to give your trademark away in your will
  5. to mark your trademark with the ® symbol to indicate that the trademark is registered (someone who does so without having a registered trademark commits an offence).

If you use an unregistered trademark, you cannot use the ® symbol; however, you can use the ™ symbol.

How do I register a domain name?

What is a domain name?

A domain name is an internet address that is used to direct:

  • internet users to your website
  • emails to your email account.

What are the components in a domain name?

A domain name typically combines a number of components.

For example, the domain name 'www.example.com.au' has the following components:

  • www - to indicate it is a worldwide web address
  • example - the domain name that you register
  • com - to indicate the category of domain name you have registered, which is also called a top level domain name
  • au - to indicate the domain name's country of origin.

What are the top level domain names or categories?

The following top level domain name categories can be used by the following types of domain name users:

Domain nameUser
com or biz businesses
edu educational institutions
gov government
org other organisation

How is a country of origin identified?

The last component of a domain name indicates its country of origin by using a country's abbreviation. Some examples of abbreviations of countries of origin are:

AbbreviationCountry
au Australia
nz New Zealand
uk United Kingdom
sg Singapore
my Malaysia
fr France
de Deutschland (Germany)
es España (Spain)

Can the country of origin component be omitted from a domain name?

Generally, domain names that originate in the United States do not have a country of origin component to the domain name (e.g. 'www.example.com').

Registration of a domain name without the country of origin component is not confined to United States domain name holders. Anyone can register a domain name that omits the country of origin. For example, an Australian applicant can apply for a domain name with the '.com' without any country of origin component.

What type of domain name can I have?

A business will often want its domain names to be the same, or similar to:

  • its trademark
  • its company name, or
  • its business name.

This will obviously make it easier for the business' customers to remember the domain name. As well, a domain name can be a powerful part of an overall branding strategy. A business that has a number of trademarks and other names, may in fact seek to have all the corresponding domain names.

Who is entitled to a domain name?

An applicant for a domain name can be:

  • an owner of a registered trademark
  • an applicant seeking registration of a trademark
  • a company
  • the owner of a business name
  • a sole trader
  • a partnership
  • an incorporated association.

What do I need to apply for a domain name?

To apply for a domain name you need:

How do I register a domain name in Australia?

A domain name can only be registered through a domain name registry.

How do I register a domain name in other countries?

The closest thing to an 'international' domain name, is one that omits the country of origin component of the domain name (e.g. 'www.example.com' instead of 'www.example.com.au').

Such a domain name is registered with one domain name registry only, and, once registered, it will not be available to anyone else in the world through any other domain name registry.

However, if you want to register a domain name that contains a country of origin extension of a specific country, you have to register each separate domain name with a domain name registry that is accredited in each respective country.

You do not have to apply through a separate domain name registry for each country. Rather, you must apply through domain name registries accredited in each country.

For example, if you sought to register 'www.example.com.au', 'www.example.com.nz' and 'www.example.com.sg', you would need to either:

  • select 3 domain name registries accredited in each of the 3 countries, or
  • select a single domain name registry that is accredited in all 3 countries.

In practice, an Australian domain name registry will be either accredited in other countries, or can engage registries in other countries on your behalf.

When do I need a business name?

What is a business name?

A business name is a name that you use to identify your business (as opposed to your products or services).

When do I need a business name?

The legal entity that owns a business can identify the business under the legal entity's own name, without the need to have a registered business name.

But if the legal entity that owns a business wants to identify the business with a different name, that different name must be registered as a business name. For example:

Owner of businessExampleYou do not need a business name if the business is identified asYou do need a business name if the business is identified
Person (sole trader) A White A White in any other way (e.g. A White Designs)
Partnership (2 or more people) A White and B Brown A White and B Brown in any other way (e.g. Smith and Brown Designs)
Company A White Pty Limited A White Pty Limited in any other way (e.g. Smith Designs)

If I register a business name do I need to register a trademark?

Business names and trademarks serve quite different purposes:

  • Registering a business name is a legal obligation, if you choose to identify your business with a name that is different to the name of the legal entity that owns the business.
  • Registering a trademark is a choice you make as part of a branding strategy for your products and services.

Using your business name as an unregistered trademark would not give you the benefits of a registered trademark.

The differences between a business name and a trademark are described in the following table:

Question Registered business name Registered trademark
Can I use it to identify my business? Yes No. You need a registered business name
Can I use it to identify products and services I sell? As an unregistered trademark yes, but without the benefits of a registered trademark Yes
Can I own it, so that it is my property? No Yes
Can I stop someone registering a similar name or mark? No Yes
I have a registered business name. Can I stop someone registering an identical trademark? No Not applicable
Do I have a legal obligation to register? Yes, if you identify your business with a name other than the business's legal name No. You may choose to register a trademark as part of a branding strategy

How do I register a business name?

Try the Australian Government's new Business Registration Service to use a single form to apply for key business and tax registrations, including an ABN, business name, goods and services tax (GST), pay as you go (PAYG) withholding and fringe benefits tax.

Where do I register a business name?

You can register a business name online with the;

  • Australian Government Business Registration Service
  • or
  • Australian Securities and Investments Commission.

Who can register a business name?

A business name can be registered by:

  • a person (e.g. a sole trader)
  • a partnership or joint venture
  • a company or other incorporated entity
  • unincorporated entity, including a trust, superannuation fund or unincorporated body or association

Searching before registering a business name

Before registering a business name you should consider doing a number of searches.

Type of searchWhere to searchWhat to look for
Business name availability search Australian Securities and Investments Commission's business names register

This search will show you if the name you want to register is already registered.

There may be similar names already registered, and some of these similar names may also come up in the search. You can consider registering an alternative business name if you decide that the similarity is so great that:

  • your customers might be confused, with the risk that you may lose business, or
  • the customers of the business similarly named might be confused, with the risk to you that the owner of the similar name might claim that you are engaging in misleading and deceptive conduct and seek that you stop using your business name.
Company name search Australian Securities and Investments Commission's business names register

There is no need to undertake a company name search.

A business name availability search will also tell you about company names.

Trademark search IP Australia's Australian Trade Marks Online Search System (ATMOSS)

If the name that you want to register is already registered as a trademark, or is similar to an already registered trademark, you can still register your business name.

But you need to consider that:

  • your customers might be confused, with the risk that you may lose business, or
  • the customers of the trademark owner might be confused, with the risk to you that the trademark owner might claim that you are engaging in misleading and deceptive conduct and seek that you stop using your business name

In either case you might consider an alternative business name to register.

Domain name search Any domain name registrar

If you intend to register a domain name, there are many advantages to having the same, or similar, business name and domain name.

You should check whether your intended domain name, if you want it to correspond with your intended business name, is available.

If it is not available, you might need to consider a different business name, or a different domain name.