Do I Need a Company to Register a Trade Mark?
Emily Young
A trade mark is one type of intellectual property (IP) that makes up a large portion of your business’ value. Trade marks are important as they help distinguish your brand from others, ensuring your goods and services stand out from your competitors. Whether you are a sole trader or are the director of a company, you may be wondering if you can register a trade mark. This article will guide you through:
- who can register a trade mark;
- risks of registering a trade mark under an individual’s name; and
- benefits of registering a trade mark under a corporate entity.
Do I Need a Company to Register a Trade Mark?
No, you do not need a company to register a trade mark. To be eligible to register a trade mark, you just need to have an address in either Australia or New Zealand and belong to one of the following categories:
- an individual;
- a company;
- an incorporated association;
- a charity; or
- an unincorporated association (collective trade marks only).
If you belong to one of the above categories, you will be eligible to register a trade mark.
Risks of Registering a Trade Mark Under Your Own Name
While you do not need a company to register a trade mark and can register it under your own name, it is important to consider who will be the controlling force behind the trade mark. A ‘controlling force’ refers to having either quality or financial control over the trade mark. Considering this will then help you determine the best legal person to be the owner of your trade mark.
If the registered owner of a trade mark does not use it within a certain period, it can be vulnerable to removal from the trade mark register. A removal application that alleges a trade mark has not been used for more than three years may be filed after:
- five years have passed from the filing date of the application for registration (for trade marks filed before 24 February 2019)
- three years have passed since the owner entered the particulars of the trade mark into the Register (for trade marks filed on or after 24 February 2019).
Where an individual owns a trade mark, but the company uses the trade mark, there is a risk that the trade mark may be successfully removed on a technicality, as the registered owner has not been the one using the trade mark.
Licensing
Often, a sole trader will register a trade mark in their name and allow their business to use it, given that the business owner and individual are the same entity. However, suppose you own a company but intend to register a trade mark under your name. In that case, you must prepare a licensing agreement between you as an individual and your company. This licensing agreement will authorise your company to use your trade mark. Despite this, if you own the trade mark, you may still need to exercise control over the trade mark, regardless of whether there is an agreement in place.
Benefits of Registering a Trade Mark Under a Company
There are several benefits to registering a trade mark under your company’s name. Of course, if you operate as a sole trader or a partnership, the application will have to be in your name or the name of the partners. However, should you later incorporate a company, you may choose to either transfer the trade mark ownership or prepare a licensing agreement.
Firstly, registering a trade mark under the name of a corporate entity will remove any doubt as to who is the rightful owner of the trade mark. If a third party ever opposes your trade mark and tries to remove it for non-use, you will be able to easily demonstrate that the rightful owner of the trade mark has been using it since the date of filing.
Secondly, you can avoid any issues or expenses of establishing a licensing agreement. This will make your trade marks easier to manage overall.
Lastly, this may protect the trade mark and your other IP assets from liability if they are owned by a company (often a holding company).
Key Takeaways
Trade marks are important as they help distinguish your brand from others. This ensures your goods and services stand out from your competitors. You do not need a company to register a trade mark. However, there are benefits to registering a trade mark under a company name where the company exists. This includes:
- alleviating doubt as to who is the rightful owner of the trade mark; and
- avoiding any issues or expenses related to establishing a licensing agreement.
If you have any trade mark related enquiries, our experienced trade mark lawyers can help. Give them a call on 1300 657 423 or fill out the form on this page to get in touch.
Frequently Asked Questions
No, you do not need a company to register a trade mark. Individuals, companies, incorporated associations, charities and unincorporated associations (in certain circumstances) can all register a trade mark.
Although you do not need a company to register a trade mark, there are benefits to registering a trade mark under a company name where the company exists. These include removing any doubt about who is the rightful owner of the trade mark and avoiding any issues or expenses related to establishing a licensing agreement.