A business name and a trade mark are two different legal concepts.
Essentially, the purpose of a business name is to allow for identification of a business, where the person carrying on the business is doing so under a name that isn’t their own. If the business owner cannot be properly identified and contacted, then those who engage with the business may be disadvantaged.
Under the Business Names Registration Act 2011, it is an offence to carry on a business under a name that is not registered. It is also an offence if the person carrying on the business does not include their business name in written communications connected with that business, and the business name is not displayed at business premises open to the public.
On the other hand, the purpose of a trade mark is to distinguish one person’s goods or services from another. The trade mark signals that goods or services come from a particular source, but it isn’t necessary that the source be specifically identified.
Often, the name of a business and the trade mark used by a business will be identical. However, under the Business Names Registration Act 2011, only one person can register a particular business name, whereas different people can separately register the same trade mark for different goods and services. This means that if there are two businesses with identical trade marks, only one is able to register that trade mark as a business name.
For example, two businesses could both register and use the trade mark “AlphaOne”. Assume the first business is a mortgage broker and second business is a courier company. From a trade mark law perspective, the two can co-exist as registered trade marks because the services are very different and there is no chance of confusion.
However, under the Business Names Registration Act 2011, the usual position is that only one of these businesses would be able to register the business name “AlphaOne”. This means that the second business which cannot register the business name is at risk of breaching the Business Names Registration Act 2011 if it is taken to be using “AlphaOne” as a business name, given it is an offence for it to carry on a business under an unregistered name.
In this situation, the only practical alternative for the second business is to trade under and register a different business name (e.g. AlphaOne Couriers).
However, assume that AlphaOne Couriers only wishes to use “AlphaOne” as its brand, particularly on its staff uniforms, vehicles, domain name, and website.
In that case, AlphaOne Couriers would need to take some practical steps to reduce the risk of being in breach of the Business Names Registration Act, should it some day be alleged that the business owner is carrying on business under “AlphaOne” as an unregistered business name.
For instance, AlphaOne Couriers could (i) include in all business correspondence and invoices its full business name “AlphaOne Couriers” and ABN (e.g. in the footer of the document), (ii) ensure its business name registration certificate is displayed at its premises, and (iii) ensure the website clearly displays the full business name and ABN in the footer and on the Contact Us and About Us page. If such steps are taken, the business owner will be identifiable to those who wish to engage with it.
Taking such steps would strengthen the position of AlphaOne Couriers that it uses its brand “AlphaOne” distinctly from its business name “AlphaOne Couriers”, such that the business owner is not in breach of the Business Names Registration Act 2011. However, the Business Names Registrations Act 2011 does not define what is meant by “carries on business under a name”. Until the issue is considered by a court, there is no certainty as to exactly what steps would suffice to avoid a business breaching the Business Names Registration Act 2011 in situations where its trade mark and registered business name are different. However, it can be reasonably assumed that the Business Names Registration Act 2011 would be interpreted purposively, having regard to its primary object of ensuring that businesses can be properly identified and contacted.
Blake Knowles is currently Principal of the Trade Marks Team at Spruson & Ferguson Brisbane (incorporating the trade mark practices of predecessor firms Cullens and Fisher Adams Kelly Callinans), Blake joined Cullens in 2010 and was elevated to partner in 2014. Blake is a specialist in trade mark due diligence, registration, oppositions and dispute resolution. Prior to joining Cullens in 2010, Blake held a number of positions at the Australian Trade Marks Office. Blake was a Principal Examiner of Trade Marks, and also Assistant Director of the Trade Marks Hearings and Oppositions section. In his role at IP Australia, Blake was responsible for developing practice and procedure, including authoring parts of the Trade Marks Office Examination Manual. Blake has also represented the Australian Government at international conferences in the field of intellectual property. As a former Principal Examiner, Blake is an expert in Australian Trade Marks Office practice. You may connect with Blake via email blake.knowles@spruson.com or LinkedIn
Peter Hallett has recently joined Spruson & Ferguson as a Principal in the firm’s new Melbourne office. Peter is a highly experienced lawyer and trade mark practitioner, with more than twenty years’ experience across all aspects of intellectual property law. Peter has particular expertise in trade marks and the negotiation and drafting of commercial agreements involving IP. Peter’s trade mark practice covers all aspects of trade mark law including clearance, registration, oppositions, infringement, acquisition/sale and licensing. Peter works with clients across a wide range of industries including food, pharmaceuticals, packaging, software, fashion and biotechnology. For over 15 years, Peter has been subject coordinator and lecturer for the University of Melbourne’s post-graduate subject Licensing Law and Technology Transfer. He has been recognised as a leading trade mark and commercial IP lawyer in industry guides such as Managing IP, World Trademark Review, Best Lawyers and Doyle’s Guide to the Leading IP Lawyers in Victoria. You may connect with Peter via email peter.hallett@spruson.com or LinkedIn