07 May 2004
What's my name? Business & domain names and intellectual property rights
There are so many different types of names used by modern business that it is easy to understand why many people don't understand what rights, if any, they have in the names used by their business.
The name of a business is an essential part of its goodwill, which can be a very valuable asset of the business. Having done all the hard work to create a good business reputation, it is surprising just how many people do not bother to ensure that their valuable names are properly protected.
This bulletin sets out a brief summary of the different types of names used by businesses and the rights each provides the owner in Australia.
Many people incorrectly believe that registration of a business name gives them exclusive rights to the name. Nothing could be further from the truth!
The various state Business Names legislation require registration of a business name if it is not the name of the company, partners or sole trader using it. The aim is to protect consumers from dealing with entities which remain legally anonymous.
For example, if Mr John Sole wanted to open a shoe store in NSW under the name "John Sole", he could do so without being obliged to register a business name. Similarly, if his company John Sole Pty Limited was to open the shoe store, there would be no obligation to register a business name. If on the other hand, Mr Sole or his company wanted to identify the business as "Big Sole", he (or his company) would have to register "Big Sole" as a business name.
Registration under Business Names legislation confers no ownership rights or exclusivity in the business name. It is no more than a process, so that members of the public can find out the identity of the people behind a business.
There is no legal action available under the Business Names Act in NSW by which the holder of a registered business name can prevent others from using the name or by which they can obtain compensation for unauthorised use.
Even if a business name is registered, its use can infringe the rights of others, who, depending on the nature of their rights, could sue for damages, injunctions or even an account of profits.
A company must have a name to be registered. The Australian Securities and Investment Commission will generally register a company name if it is not identical to an existing company name. However, just like business names, registration of a company name does not guarantee the company the exclusive right to use the name.
The registration of a company name is simply a way to identify the company ? just like a natural person has a name. Use of a registered company name may infringe the rights of third parties.
In general terms, a domain name is the name of a website. For example, the domain name for the Bartier Perry website is www.bartier.com.au.
Domain names often consist of the name of the business that operates the website or the name of the goods or services that the business supplies. There is usually some connection either to the business or the goods/services that the business supplies. It is not difficult to see that domain names are often the subject of heated dispute over the ownership of a name.
But, just like company names and business names, registration of a domain name does not give any exclusive right to use the name. Use of a registered domain name can infringe the rights of third parties.
The terms and conditions that you agree to when you apply to register a domain name usually include a provision that qualifies any registration as being subject to the rights of third parties and often include a procedure where third parties can object to your domain name registration and have your domain name transferred to them if you are in breach of their trade mark rights.
Some rights created by use
Use of business names, company names and domain names can, over time, create "common law rights" to prevent passing off and perhaps also provide your business with remedies under the Trade Practices Act for misleading and deceptive conduct by others using your name. But the registration of these types of names, while necessary for other purposes, does not guarantee exclusivity.
Passing off occurs where a trader uses the name, goodwill or unregistered trade mark of another in a manner that misrepresents to the public that they are, or have an association with, that other person.
Trade marks are used to connect the goods or services of the business with the trader - ie. they are applied to goods or services ? and are often referred to in the courts as "badges of origin". Trade marks often overlap with business, company and domain names.
A trade mark gives the owner the exclusive right to use the mark. If the trade mark is the name of a product or business then the owner will have exclusive right to use that product or business name. Exclusivity is limited to use of the trade mark with goods or services for which you can demonstrate ownership of the work.
Trade marks can be registered or unregistered. Registration carries many benefits, including the right to sue for infringement in a simplified way. Registration is not always easy because the Trade Marks Office (a Commonwealth department) is bound not to register names as trade marks where (amongst other reasons) the word is already registered to someone else, or where the word lacks distinctiveness, because it is descriptive or in praise of the product, or because it is a surname or geographical name.
The rights provided by registration of a trade mark can be enforced by the owner of the mark under the Trade Marks Act. An unregistered trade mark still gives the owner some rights to exclusive use of the mark. These rights can be enforced by passing off or Trade Practices Act actions.
Trade practices & fair trading legislation
The Trade Practices Act and the fair trading legislation in each State prohibit businesses from engaging in misleading or deceptive conduct. A breach will occur if there has been misleading or deceptive conduct, regardless of whether or not deception is intended.
The use of a business, company or domain name can infringe either a registered or unregistered trade mark, or give rise to actions under the trade practices or fair trading legislation regardless of whether a trade mark is involved.
How do you protect your name?
To protect your name -
Conduct a search to check that the names you intend to use are unique to your business.
Register your business, company and domain names as required.
Register your names and logos as trade marks and get legal advice about the proper use of registered and unregistered trade marks.
Enforce your trade mark rights ? there is little point in having a trade mark unless you are prepared to enforce it.