What's In A Name?

"But we own the name! They can't use it!"

It's an oft-repeated scenario: A restaurateur rings up and says there's a coffee shop across town opening up using the same name as his expensive restaurant. Normally, though, after some questioning, I have to explain to my man that he doesn't really own the name at all, that all he's got is a registered business name or the name as a trading company.

"What", he asks, "doesn't this mean I own the name?" If this is your initial reaction, I think you should read on…

The ownership of a name in Australia, as opposed to merely having a registered business or company name, is only possible through registration of the name under the trade marks regime. Business names are a State matter and, at their best can only be regarded as a revenue-raising system: If you want to trade in a State under a name which is not your own personal name, that State requires you to register the name as a business. At the same time, the business name application form will probably have some small print stating that, firstly, the State in question won't guarantee that no other party already has the name and, secondly, that the registration doesn't necessarily give you any proprietorial interest in the name itself.

The situation with company names is just as parlous: Once the States handed over the company affairs to the Federal government a decade ago, (although that is now subject to constitutional challenge) we ended up with thousands of companies having the same names as companies in other States. Rather than force companies to change their names, the Federal authorities decided they would distinguish between companies, not by name, but by Australian Company Number. Hence you will see on the Company Register companies of identical names but differing ACNs. What sort of protection in a name itself does this give you?

Leaving aside the trade mark regime for a moment, there are both statutory and common law remedies available to an aggrieved party where another party attempts to trade off your name as their own. To do this, one might be guilty of the tort - or civil wrong - of "passing off" or be in breach of the Trade Practices Act or the various State's Fair Trading Acts .

However, the road to a satisfactory conclusion in cases like this is long and tortured, and I always advise my clients, whatever the expense, it is best to have monopoly protection in the name you are using by registering a trade mark.

Unlike business names or companies, one doesn't just "front up" to the Trade Mark Office and register a particular name as a trade mark. Whether you have established a reputation in the name already, or you wish to do so, you must first do a thorough search of the Trade Mark Register to ensure there is no potential conflict with a similar name, and then, many months later, you may have to go through lengthy correspondence with a trade mark examiner who may raise their own objections to registration of your proposed mark.

The whole process is not necessarily inexpensive and easy, and nor should it be: Monopoly protection - that is the exclusive right to use a particular name or logo throughout Australia - should be hard won. Once established, it is much easier to defend your right to such ownership than utilising the Trade Practices Act or the common law.

If I had written this article 6 or 7 years ago, I could have ended it here, quite confident that I had "covered all the bases", but now we have domain names. Because of the importance of Internet exposure, domain names are becoming as important as the names under which you trade. Don't think, just because you are a restaurant, for example, that the Net won't have much to do with your business. Websites, with their interactive facilities and their plethora of uses, will be de rigueur in the operation of all businesses in the future. So, what are you going to do when you find that somebody else has a domain name identical to your own trading name?

In Australia, at least there are some fairly strict rules to comply with before you can be granted a domain name with the .au suffix. Generally speaking, you can't register an Australian domain name unless you have a similar or derivative company or business name already registered. But that's the rub: You may find some person on the other side of the country who also has a business name identical to your own (but in a different business) and who is entitled to register your name as his domain name.

To prevent such a party from using your name, there are dispute resolution processes available, but you have to prove all of the following three things:

• you must have a trade mark and the domain name is identical or confusingly similar to it;
• the owner of the domain name has no rights or legitimate interest in it, and
• the domain name is being used in bad faith.

Even if you can prove all of the above, the other party can weaken your complaint, and lessen your right to successfully claim a right to the name, in a number of ways, which space won't allow me to go into here.

Prevention being better cure, even if you're not thinking of creating a website in the foreseeable future, the bottom line is, to protect your own interests you should register your name now and just pay the relatively small annual fee for it. Unlike the trade mark regime, where there are 42 different classifications of goods and services, you only get one shot at registering your domain name with a particular suffix.

Hmm, I can feel a whole article coming on just on the subject of domain names...

Also in this section

• What's In A Name?
• GST - Into Year Two