Decoding a Name to Benefit Your Business
Many people become confused about the difference between the terms ‘trade mark’, ‘company name’, ‘business name’, ‘domain name’ and ‘phoneword’, and the various forms of protection each offers. Mistaken assumptions about each of these terms may adversely impact upon your business, and the advice you give/receive. Understanding these terms becomes even more important during times of economic uncertainty when many businesses are being bought, sold or entering into insolvency or receivership.
For example, a common misconception is that by registering a company name, a business name or a domain name, a company is immune from the possibility of infringing a registered trade mark.
We have prepared the following information for you to consider in relation to your business. In April we will be holding a seminar at MST with the aim of further helping you to understand these terms, and how they can have an incredible impact on your business. This session will be particularly helpful to accountants and business brokers.
A ‘trade mark’ is any ‘sign’ used, or intended to be used, to distinguish a particular class of goods and/or services of one trader from those of another.
The ‘sign’ may include any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent – on their own or in combination.
Registration of a trade mark in a certain class gives the registered owner proprietary rights allowing exclusive use of the trade mark throughout Australia in respect of that class of goods and/or services. The trade mark owner may licence these rights to third parties. As the rights attached to a registered trade mark are proprietary, the trade mark owner may also bring infringement actions against unauthorised parties using the trade mark.
Registered trade marks are protected through the Trade Marks Act 1995 (Cth).
Common law rights may attach to unregistered trade marks.
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A ‘company name’ is the unique name given to each identifiable legal entity registered under the Corporations Act 2001 (Cth).
As opposed to a registered trade mark, no proprietary rights are granted in respect of a company name. However, by registering a company name a business has the advantage of exclusive rights to the use of that name in Australia, without having to register the name in each state.
Company names are administered by the Australian Securities and Investments Commission (www.asic.gov.au)
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A ‘business name’ is a name, style, title or designation under which a business operates.
Business name registration is compulsory and must be completed before the business starts to trade in a particular State or Territory. As a result of this requirement, there could be businesses with the same name in different states.
Business names do not necessarily provide proprietary rights for the use of the trading name.
If you are using a name other than your own personal name or company name to trade, it is compulsory that you register that name in each state and territory that you trade in. (www.business.gov.au)
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A ‘domain name’ is the exclusive, unique, alphanumeric name given to a particular internet address. There are no proprietary rights granted through registration of a domain name. Instead, the owner of the domain name has a licence to use the domain name for a specified period of time and under certain terms and conditions.
Domain names are allocated on a ‘first come, first served’ basis. Provided the relevant eligibility criteria are met, the first registrant applying for a particular domain name will be permitted to licence it (www.auda.org.au)
A domain name may be registered as a trade mark provided it meets the requirements of the Trade Marks Act 1995 (Cth).
Trade practices legislation should also be considered in the selection of any domain name.
A ‘phoneword’ or ‘phone name’ is the alphanumeric translation of a phone number made up from the letters of the alphabet that appear on a telephone keypad.
Phonewords are released at auction by the Australian Communications and Media Authority. (www.acma.gov.au) (www.smartnumbers.com.au)
Phone names that start with a ‘1300’ or ‘1800’ prefix can have between 6-10 letters. Phone names that start with a ’13’ prefix can contain 4 or 5 letters.
Ideally, to maximise the impact of your name, your company will have registered the same recognisable term as a trade mark, a company name, a business name, a domain name and a phoneword. If this is not the case, circumstances may arise where a registered trade mark owner brings trade mark infringement proceedings against a business name, company name, domain name or phoneword.
As we have considerable experience in these areas, Mason Sier Turnbull is available to assist with registrations of trade marks, company names, business names, domain names and phonewords as well as intellectual property strategy and marketing.
We will deal with these topics in our upcoming seminar on the 23rd April, 2009.
Author: Noelene Treloar