Before you settle on a name it’s very important to check that no one else already has rights to the name, in particular, registered trade mark rights. Be sure to check that the name you have in mind won’t conflict with some one else’s trade mark registration, or existing trade mark application, before you go to the trouble and expense of paying for signage, stationery, website development etc for your new business. Searches of the IP Australia trade mark database can be performed to gauge the risk of an infringement arising. Working out whether or not there is a risk of infringement arising can be difficult and you should seriously consider having a trade mark attorney advise you.
The consequences of not performing preliminary clearance searching can be very serious. If you go ahead with the name without checking and it turns out that you do infringe someone’s pre-existing trade mark rights then you may end up having to pulp your stationery, take down your signage and possibly even give up your domain name.
It’s also possible to infringe other people’s unregistered trade marks under the common law tort of Passing Off and to fall foul of the Competition and Consumer Act 2010 (which has replaced the old Trade Practices Act 1974) if you choose a name that causes customers to be mislead into thinking that you’re associated with another business of the same name. Searches of the Yellow Pages and Internet search engines, for example, can help to gauge whether or not there are other businesses trading with the same name in the same goods or services.
You should also be aware that not every name or logo is registrable as a trade mark even if no one else has already registered it in their own name. In particular, if your name or logo is directly descriptive of the services or goods that you trade in , then it’s likely to be difficult, if not impossible to obtain trade mark registration. I have written an article about selecting distinctive trade marks to help people understand and avoid this problem.
Unless you will be trading under your full name, your name including middle initials or your registered company name, then you must register your business name with ASIC. If someone else already has the trading name registered as a business name then ASIC may decide not to register it, in which case you won’t be able to legally trade under the name whether or not you have a trade mark registration.
So, before investing in signage, domain names, websites, stationery etc, based on your new business name:
1. Check if the name you’re considering would be at risk of infringing anyone else’s pre-existing trade mark rights.
2. Apply for business name registration with ASIC and wait to see if it is accepted before adopting the name.
3. Choose a name that has good prospects for being registered as a trade mark.
4. Perform searches, including Yellow Pages, ASIC company name and Internet searches to gauge if the name you’re considering would conflict with someone else’s unregistered trade mark rights.
5. Assuming that you have selected a distinctive name, which is recommended, then seek trade mark registration.