Do I need a trade mark?

Do I need a trade mark?  I already have a domain/business name/company name!

People tend to have a pretty good feel for what a trade mark is – that part of a brand you can say or describe, for example a name (Nike®) or a logo (the “swoosh”). But many people don’t realise that the only way to obtain an exclusiveright to use or licence use of a brand is to register it as a trade mark.

But I’ve already got a domain, business name or company name registered – isn’t this enough?

Nope!  There’s a common misconception that registering a domain, business name, company name or social media handle provides some exclusive rights in that name. In fact:

  • Company names are used to identify legally incorporated entities. However, a company may choose to trade under a name other than its registered company name (e.g. XDE Holdings Pty Ltd);
  • Business names are registered trading names and can be used instead of a full legal entity name (e.g. XDE Designs Pty Ltd might trade as XDE Design);
  • Domain names provide exclusive right to use a website address. Registration of a domain name does not give the owner any proprietary rights to that name separately from the website address;
  • Only a valid trade mark registration can be used to stop other traders from using the same or a similar name on goods or services that are the same as or similar to those covered by the trade mark registration.

 

Even if you successfully register a company name, business name or domain name, you might still find yourself on the receiving end of a nasty letter if you use the domain, company or business name for goods or services the same as or close to those already covered by a registered trade mark. It’s really important to make sure a domain, business or company name doesn’t infringe a registered trade mark.  

A valid trade mark registration will give you comfort that your chosen brand is available for use without infringing someone else’s rights. Imagine if you had printed up your stationery and marketing materials and paid for awesome signage on your storefront only to find out that you would no longer be able to use any of it because you were in fact infringing someone else’s trade mark!  Your trade mark registration can likewise be used to stop other traders from using the same or a similar name in respect of the same or similar goods or services that your trade mark covers.

A trade mark registration will also give you the ability to licence use of the trade mark in respect of the goods or services identified in the registration.  Need more convincing?  A trade mark registration is a saleable asset – a clear value-add to any business.

Kellie Jukkola

by Kellie Jukkola, Associate



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