Is It Better To Use a Business Name or a Domain Name for a Trade Mark?

Emily Young

• 8 February 2022
• 8 February 2022
• 6 min read

A trade mark is one form of intellectual property (IP) protection that protects your brand assets, including your business name, logo, song, colours or even a specific shape of your packaging. Essentially, a trade mark allows you to protect and enforce your rights to your brand and distinguish it from your competitors. This serves as both legal protection and a marketing tool, increasing the value of your business overall and protecting your reputation. 

When you are first deciding what elements of your brand you should register, you might be debating between applying to trade mark your business name or your domain name. This article will explain whether it is better to use a business name or a domain name for your trade mark application. 

Applying to Register Your Business Name as a Trade Mark

Business names are one of the most common things to register as a trade mark, as it identifies you to your customers. Before operating your business, you must register your business name with the Australian Securities and Investments Commission (ASIC). There are some exceptions to this, such as if you are trading under your own given name. 

However, this registration does not give you exclusive rights to the use of your business name. If you want exclusive rights to the use of your business name, you will need to register a trade mark for it. This registration will protect your business name Australia-wide for an initial 10 year period, at which time you can choose to renew your registration. Overall, registering a trade mark for your business name is an excellent investment.

Applying to Register Your Domain Name as a Trade Mark

With many businesses operating partially or even entirely online, understanding the importance of a domain name is critical. A domain name refers to your website name, which is how your potential customers will find and identify your business online. A domain name is used with various extensions, such as .com, .net, .org and more.

Domain names have their own registration process that you must complete before using them. This ensures that all domain names are unique. For marketing purposes, you should try to ensure that your domain name matches your business name as well as your social media handles.

Business Name vs Domain Name: Which is Better for a Trade Mark

Although domain names do not need to be registered to be protected, applying to trade mark your domain name will help protect your brand in its entirety.

For example, consider registering the domain name www.theshadydog.com.au for your business. In such an instance, no one will be able to register that domain name.

There are, of course, certain exceptions to this. For example, someone else may be able to register www.theshadydog.net. However, generally speaking, that domain name will be associated with your business. 

Although you will have your domain name registered, this will not prevent others from establishing a business with the same name. Instead, it would only prevent them from having the same domain name. This means that it is important to register your business name and, ideally, have this name be the same as your domain name. 

How to Register a Trade Mark

Before registering a trade mark, you should understand the steps involved in this process. 

1. Choose Your Trade Mark

Firstly, you need to select what brand element you wish to register. This might include your business name. This is hopefully also available for registration as a domain name. In fact, before registering your business name, it is generally recommended that you check that it is available as a domain name and a trade mark. 

2. Choose Your Trade Mark Classes

After choosing the trade mark you wish to register, you will need to nominate the classes of goods and services that you will use your trade mark under. There are 45 classes you can choose from, separated into 34 goods categories and 11 services categories. Your trade mark will only have protection under the classes you select at the time of application, making this a crucial step. 

3. Conduct a Trade Mark Search

After selecting the best trade mark and classes for your product, you need to ensure it is available for use. You can perform a trade mark search using IP Australia’s search tool ATMOSS.

Importantly, if your trade mark is too similar to an existing trade mark, it will not be approved.

4. Apply For a Trade Mark

Finally, you must apply for trade mark registration. After submitting your application, IP Australia will assess your application against the legislative requirements to determine its suitability for registration. If your trade mark meets all the requirements, it will be placed on the trade mark register. 

Key Takeaways 

When you are first deciding what elements of your brand you should register, you might be deciding between applying to register a trade mark for your business name or your domain name. Some key things to note on this topic include that:

• all domain names are unique; 
• a registered domain name will not prevent others from establishing a business with the same name; and
• registering your business name as a trade mark will give you exclusive rights to its use. 

If you need help registering a trade mark for your business name, our experienced IP lawyers can help. You can get in touch with them on 1300 657 423 or by filling out the form on this page.

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