Stop Using my Name!

by Orana Catlin

There is a lot of confusion in many businesses about names. The Advisory Council on Intellectual Property (ACIP) is conducting a review into the interplay between trade marks, business names, company names and domain names to try and address this confusion.

ACIP is concerned many businesses and individuals mistakenly believe the registration of a business, company or domain name provides:
  • a proprietary right in the name equivalent to trade mark registration, or

  • immunity from a trade mark infringement claim.

However, the registration of business, company or domain names of itself gives no exclusive right to use the name. This confusion means many fail to conduct adequate searches of the trade marks register which may lead to the infringement of another party's trade mark and substantial costs being incurred if the business or company name must be changed. It also means many fail to maximise the protection of their trade marks.

As part of its review, ACIP has released an Issues Paper seeking submissions on several issues, including the following options, to avoid the present problems:
  • abolish the State and Territory business name registers. Instead, businesses would be required to disclose certain information in all dealings. A similar approach is used in the UK
    introduce mandatory searches of the trade marks register prior to registration of a business or company name;

  • combine the State and Territory business name registers into one register. This would alert applicants to identical registrations in other States or Territories which may indicate the name is registered as a trade mark;

  • combine the State and Territory business name registers and the company name register into one register;

  • introduce a two tier trade mark system. A business or company name registration would constitute a second tier trade mark which has more limited rights than a standard registered trade mark.

The ACIP review will also examine whether federal legislation should be introduced to allow business and company name registrations to be challenged. When a trade mark owner is prevented from registering a business or company name due to the prior registration of the same name by another party, there is no legal recourse to challenge the registration unless a trade mark infringement has occurred.

ACIP is also seeking comment in relation to the problems of bad faith registration of domain names and the occurrence of trade mark infringement through domain name use.

The ACIP Issues Paper can be accessed Submissions close 15 March 2004.


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