Business Owners Check: Your Business Names and Trade Marks Now

Michael Owens, Partner, Brisbane
Claudia Gillies, Solicitor, Brisbane
It is expected that from mid 2012 all business names will be registered nationally (rather than on a State or Territory basis) under a new business names registration system. Existing business names will be automatically included in the national business names register maintained by the Australian Securities and Investments Commission (ASIC).
Where two existing businesses from different states have the same name, an identifying suffix, e.g. “(QLD)” or “(NSW)”, may be added to the end of each name.
However after the commencement of the new system, if a business name is already registered in one state and migrated to the national register, it will not be possible to register an identical business name with a different geographic suffix.  For example, an existing registration for NICK' S FRESH FOOD in Queensland will block any other registration for a NICK' S FRESH FOOD located in another State.
Remember also, having a registered business name does not guarantee you the exclusive right to use that name in connection with your goods and services. Only a registered trade mark gives you a property right that can be enforced against your competitors.
Key features of the system
The system is now expected to be in place by mid 2012. In addition to the key features set out in Gadens' June 2010 report, other expected features include:
Simpler identification of the entity behind a business name (because the register will require an Australian Business Number (ABN) for any new business name registration);
Reduced cost and inconvenience for businesses, because you will only have to register your name once, nationally (rather than in each state or territory in which you wish to operate).  Also, the registration and renewal fees for the new system are lower;
Undesirable business names (e.g. names that are misleading to consumers, or offensive) and identical or nearly identical business names will not be able to be registered;
On-line applications with links to trade mark and domain name availability searches.
Franchise owners
Importantly for franchise owners, the consent of franchisors will not be required for the registration of the business names of franchisees.  Consent applications can only be made by an entity to whom a business name is already registered, for example, where a business is sold.
Franchisees in different geographical areas will be able to register names that differ only by reason of that geographical description, e.g. it is expected that NICK' S FRESH FOOD NEW FARM will be registrable along with NICK' S FRESH FOOD TENERIFFE.
Franchisees will still need to be licensed to use any trade marked component of a business name under the terms of their franchise agreement, or risk trade mark infringement and passing off.
Conclusion
Existing businesses should check their business name registrations before the new system commences, or they may lose priority to a business owner in another state.
Business name registration does not provide trade mark protection.  Business owners should consider the availability and registration of trade marks and domain names in addition to their business names, to ensure that the use of their business name is secure upon commencement of the new national system.
 
This report does not comprise legal advice and neither Gadens Lawyers nor the authors accept any responsibility for it.
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This update does not constitute legal advice and should not be relied upon as such. It is intended only to provide a summary and general overview on matters of interest and it is not intended to be comprehensive. You should seek legal or other professional advice before acting or relying on any of the content.