Business names, trademarks, domain names & co names

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The difference between trade marks, business names, company names and domain names often causes confusion for traders.

Globalisation has meant  the importance of these types of source identifiers has increased. There is a lot of confusion as to the nature of the rights which attach to each of them. Not understanding these differences can lead to legal disputes and commercial uncertainty.

Some people wrongly believe that registration of a business or company name confers upon the registrant a proprietary right in that name, and an automatic right to stop other people using that name. Without registration as a trademark, your business name or company name is unprotected.

Unlike a trade mark registration, a business or company name registration does not grant you a property right. It just gives you an exclusive right to use that business name, but you can lose your business name to a trademark owner who proves that your business name infringes a trademark which is substantially identical or deceptively similar to your business name in respect of similar goods or services.

So if you decided to use your business name on your goods which were similar to those covered by an existing trademark owner’s registration, you could be asked to surrender your business name if the owner of the trademark was able to prove infringement.

It is prudent therefore to conduct a search of the trademarks database prior to registering your business name to make sure nobody is presently using that name in your line of business or no applications are pending. You should include a check of both registered and unregistered or common law trademarks prior to embarking on your business venture.

Even a domain name, at least in Australia, does not give you a property right, merely a revocable license to use that name for a period, which is renewable. It is effectively leased to you. Domain names should also be registered as a trademark to protect your domain name more effectively, as trademark owners have been very successful in having domain name disputes settled in their favour under the online Uniform Dispute Resolution Policy.

 This Policy is something you sign up to, and agree to abide by, when you register your domain name, and is a more informal low cost method of trademark owners taking action against you to have your registration cancelled or transferred to them. The dispute involves the trademark owner  filing fee of about $1500US and the dispute is mediated electronically within a couple of months of filing the dispute  by an arbitrator allocated by  WIPO (World Intellectual Property Organisation). It is therefore far more appealing to a trademark owner because of it's lack of expense and the quick resolution it can achieve compared with expensive and protracted court proceedings. 

In summary there are  separate registration systems for domain names, company names, business names and trademarks, and different forms of rights and entitlements which vest in the owners of each. 

There are also many non-conventional forms of trademarks which can now be registered, and there have been successful applications for colour marks, shape marks, scent marks, sound marks and packaging or a combination of these. For instance the colour pink has been successfully registered as a trademark in respect of pink batts insulation, whereas Cadburys recently failed in it's effort to sue Darrell Lea for infringing their trademark in respect of the colour dark purple used in their sale of chocolates. 

 Some of the obvious advantages of having a trademark are that you can buy, sell, assign, mortgage or license it. Previously in selling your business you would have to sell the goodwill along with the business. A trade mark gives you the right to commercialise the value in your trade mark to maximise your profits. 

Before launching your brand, and depending on how large your activities are going to be you should consider all of these aspects.

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