My Business Name Is Not Unique. Can I Still Trade Mark It?

Angus

• 6 July 2021
• 18 January 2022
• 4 min read

Have you found out that one of your competitors has the same business name as you? You may be wondering whether you can still trade mark your business name. Thankfully, there are some options. In most circumstances, when another business has a similar name to you but provides different goods and services or is in a different industry, you may both be able to coexist and enjoy trade mark protection. However, sometimes a business with an identical name will be operating in the same industry as your business. This article will explore some key considerations before registering a trade mark for a business name that is not unique.

Someone Has the Same Business Name

You have finished setting up a new business, and everything is looking good. You begin applying to trade mark your business name, only to find out another business has the same name. Luckily, you may still be able to use your business name.

Suppose someone has registered only a business name with ASIC. In that case, this will not necessarily affect your trade mark application. Once you file your trade mark application, IP Australia will search the trade mark register for similar trade marks. IP Australia does not review the Australian Business Register. They will only review the Trade Marks Register, so if there are no similar trade marks on the register for similar goods or services to you, you will likely be able to trade mark your business name if you meet all other requirements. Hopefully, the business with the same name has not lodged a trade mark before you.

Once IP Australia accepts your trade mark application, other parties can file an opposition against the final registration of your trade mark. There is a two-month period from the date that IP Australia begins advertising your application for other businesses to oppose your application. Businesses in your market segment may launch an opposition if they think your name is too close to their business name, if they believe they had rights before you.

Another Business Registers a Trade Mark for Your Business Name First

If another business has a trade mark application for your business name, you may still be able to do something about it. Firstly, check whether the application is still pending and whether you are within the two month opposition period to oppose the registration with IP Australia. If you are outside of the two month period, there is little you can do to oppose the trade mark.

However, if you were using the business name in the same industry before the other party, you may be able to obtain registration because of your prior use or even as an honest concurrent user. This is a complex area, and you should obtain legal advice before deciding to take this course of action.

The best way to avoid a situation like this is to research the market before registering a business name, so you know whether you can trade mark your business name and avoid becoming embroiled in lengthy legal disputes that detract from your core business. 

Will Registration Stop Other Businesses?

If you have obtained your trade mark registration but subsequently discover that another business uses your business name, you have options. Firstly, you must determine whether the other business provides goods and services that are similar to yours and whether there would likely be confusion in the marketplace. 

Businesses operating in different industries with the same or similar names will likely not infringe on each other’s trade marks. If the public is unlikely to confuse you and the other business in the market, you may not be able to claim the other party is infringing on your business name.

Key Takeaways 

Before deciding whether to attempt to trade mark your business name that is not unique, you should consider:

• whether the other business has trade marked their business name;
• if you able to object to the other business’ trade mark registration;
• whether you can buy the trade mark; and
• if the business is operating under the same trade mark class as your business.

If you have any questions about registering a trade mark for a business name that is not unique, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions