We believe there is a misconception amongst business owners that registering a business name with ASIC provides them with ownership of that name or exclusive rights to trade under that name. It doesn’t!

Registering a business name simply allows others to search and discover the details of the person or company that trades under that name. It is a legal obligation only. In other words, do it or there will be penalties!

To secure the exclusive right to use that name in business, and bar rivals from exploiting that name, owners need to do much more than simply register a business name. This is usually done by registering a trademark. This requires a process through the government body IP Australia and assistance from a specialist lawyer or patent attorney helps.

But is it absolute protection? (perhaps another misconception)

Joe asks Blake Knowles from Cullens Patent and Trade Mark Attorneys for a brief answer to this knotty problem.

Joe: If say Bob registers a trade mark and later becomes aware that someone was using that mark before him (but it was not registered), can that person challenge Bob’s registered trade mark? If so, what is the usual outcome?

Blake: In Australia, the first person to use a trade mark for particular goods or services is generally considered the ‘proprietor’ and has the best rights to that trade mark (for the relevant goods or services).

If no-one has used a trade mark, the first person to apply for registration is usually considered the proprietor. Often situations arise where one person was the first to use a trade mark, but someone else later innocently obtained registration of the same or a very similar trade mark. In this situation, the first user can ask a court to cancel the registered trade mark.

However, cancellation is discretionary and the court will consider the position and conduct of the parties. If the registrant applied for the trade mark in good faith, and has developed significant goodwill in the brand, then the court might allow the trade mark to remain registered.

However, the earlier user will generally also retain an entitlement to also use and register the trade mark.

Whilst it is not absolute, it is still the best protection a business owner can get. Blake / Cullens have written a guide on Trade Marks. This can be downloaded here: Cullens – Trade Marks Guide.

What to do next: If you would like help or more information on trade marks, don’t hesitate to contact Blake Knowles from Cullens on (07) 3011 5555 or email b.knowles@cullens.com.au.


The information provided by Kafrouni Lawyers is intended to provide general information and is not legal advice or a substitute for it. Business people should always consult their own legal advisors to discuss their particular circumstances. Kafrouni Lawyers makes no warranties or representations regarding the information and exclude any liability which may arise as a result of the use of this information. This information is the copyright of Kafrouni Lawyers.

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