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

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.

A trademark can be registered for any of the following:

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:

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.

The following factors may influence your decision to register a trade mark.

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.

Where do I register my trademark?

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

You can apply by choosing a Pre-application service (TM Headstart) or a standard application on 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.

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.

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.

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:

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:

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's 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:

• an ABN (Australian business number)
• an ACN (Australian company number)
• an Australian business name, or
• an incorporated association number (if you are an incorporated association).

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.

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:

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:

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.