The Law Handbook 2024

Chapter 7.7: Trade marks 769 • enable trade mark owners to avail themselves of the enforcement rights given to owners of registered trade marks under the TM Act. Differences between trade marks and names Confusion often arises about the rights of owners of registered trade marks, compared to the rights of those who register company names, business names and domain names. It is important to understand that registering a business or company name with the Australian Securities and Investments Commission ( ASIC ) does not give the registrant enforceable rights in that name. Since May 2012, the Commonwealth Govern­ ment, through ASIC, has controlled the names of businesses and companies (which were formerly administered on a state-by-state basis). ASIC requires businesses and companies to register their names in order to be permitted to trade under those names. However, registration with ASIC does not mean that the trader owns that name. Also, registration does not protect the trader against third-party claims for trade mark infringement (or other legal liability as discussed further below). A trade mark registration is the best way of securing enforceable rights in a trading name and protecting against trade mark infringement. Company names A company name is created when a company (also known as a corporation) is incorporated. The Corporations Act 2001 (Cth) applies particular legal requirements to corporations. Incorporation is indic- ated by the use of the abbreviations ‘Pty Ltd’ or ‘Ltd’ after the company’s name. ‘Pty Ltd’ is an abbreviationof ‘Proprietary Limited’. ‘Proprietary’ indicates a privately owned corporation. Another form of incorporation is as a public company. Public companies are indicated by the abbreviation ‘Ltd’. Public companies are generally owned by a larger number of shareholders than is permitted for proprietary companies (proprietary companies must have no more than 50 non-employee shareholders, while there is no limit on the number of shareholders of a public company). When selecting a company name, ensure that name is not already registered as a company name (search for company names in ASIC’s registers at https://connectonline.asic.gov.au) or as a trade mark (see ‘Searching for registered trade marks’, below). If a name is already registered, another name must be chosen. This means that registering a company name prevents another person from registering the same name. However, it may not prevent a deceptively similar name from being registered (e.g. registering the name ‘ABC Company Pty Ltd’ may not prevent ‘ABC Corporation Pty Ltd’ from also being registered). Each company has a unique Australian Company Number, which can assist to accurately identify a particular company. Business names A business name is the name a trader conducts business under. Registering a business name is a compulsory statutory requirement if a natural person wishes to trade under a name that is not their own. If a person trades under a name that is not their own and has not registered the name as a business name on ASIC’s Business Names Register, they are in breach of section 18 of the Business Names Registration Act 2011 (Cth). For example, if Fred Brown establishes a lawn- mowing business known as ‘Fast Fred Mowing’, he is required to register the name ‘Fast Fred Mowing’. Alternatively, if he wishes to trade under the name ‘Fred Brown’ then registration is not required, because this is his own name. Further, if ‘Fast Fred Mowing’ has already been registered by Fred Black Gardening Pty Ltd, then Fred Brown will not be able to register that identical business name. However, he could register ‘Fast Fred Gardening’, since registering a business name does not give Fred Black Gardening Pty Ltd any rights over ‘Fast Fred’ or ‘Gardening’. As discussed below (see ‘Common law trade marks and passing off’), rights in trading names may arise under common law from using a name as a trade mark and rights may additionally be obtained by trade mark registration. This is important to understand, because many small business traders believe that registering their business name is sufficient protection, enabling them to have sole control and exclusive use of that name. However, if another trader already has enforceable trade mark rights for a deceptively similar business name, a mere business name registration will not protect the new trader from possible liability for