Commercial Law – Debunking Common Trademark Misconceptions

Ensuring Corporate Documents' Enforceability - What to Know

03/11/2021

Trademark laws can be confusing for anyone, but it’s important not to let them hinder you from understanding them if you’re running a business. Knowing your intellectual property rights is just as important as any other aspect of running a business. Of course, you can always hire the services of corporate lawyers to help you navigate this area of entrepreneurship, but it’s helpful to have some basic knowledge yourself.

Here are some of the most common misconceptions surrounding trademark laws in Australia:

Registering Your Business Name vs Registering a Trademark

When you’re registering your business name with the Australian Securities and Investments Commission (ASIC), it’s important to remember that it’s not the same as applying for a trademark name. Many businesses make this mistake, which can lead to some complicated misunderstandings.

A business name registration doesn’t give you exclusive rights to that name. It just means you’re legally permitted to conduct business in Australia. Additionally, if you have a registered trademark in Australia, it doesn’t exempt you from needing to register your company name with ASIC. You still need to do that if you want to conduct business here.

Matching Your Domain Name to Your Registered Trademark

Some businesses think it’s essential to match their .com.au domain name with their registered trademark. However, this is only true for foreign business owners who don’t have an Australian Registered Body Number. If this is the case, these foreign business owners have to rely on their registered trademark name to meet their Australian Presence requirements.

Due to recent changes to domain licensing requirements, their domain name needs to be an exact match to the subject words of their Australian trademark, excluding punctuation marks and words like “a,” “the,” “and,” “or,” “of,” and “&”. The domain name can’t be abbreviated, written in acronym form, or contain only one word from the Australian trademark either.

Official Bodies Monitoring Trademark Infringement

Another misconception surrounding trademark laws is that there’s an official body monitoring trademark infringement. Unfortunately, this isn’t the case in Australia. If you have a registered trademark, it’s your responsibility to enforce your rights. 

With the absence of an official body to monitor trademark infringement, it also falls on your hands to actively monitor the market for strikes against your intellectual property rights. Corporate lawyers are essential in this case because they’re more knowledgeable on the specifics of the laws and can handle the situation for you.

The Policies of Applying for a Trademark Name

When you’re applying for a trademark name, the general rule is that you have to actively use it in relation to your specific products or services if you want to maintain it. However, you can still apply for a trademark even if you’re not going to use it immediately.

Note that another party can apply to remove your trademark three years after registration. If you’re not using the trademark by then, their application could be successful. This rule helps prevent businesses from registering trademarks just to prevent their competitors from using them.
 

The Scope of Your Trademark Name

As a business owner, it’s important to know the scope of your trademark name. A common misconception is that a trademark gives you exclusive rights to use, license, and sell the name for all goods and services. This is not the case at all. In Australia, a trademark only gives you exclusive rights for the specific category of goods and services you register it for. 

In other words, someone else could register the exact same name or a similar one if their business is unrelated to your goods or services. And if you use a descriptive phrase as a trademark, it doesn’t stop a competitor from using it to describe their goods or services.

Conclusion

Trademark laws can be confusing, but it’s important to understand them if you want to run a successful business. Hiring corporate lawyers is always a good idea because their expertise can do wonders to protect your business from mishaps concerning your intellectual property.
GLG Legal is a group of corporate lawyers in Brisbane, New South Wales. If you’re interested in furthering your intellectual property’s protection, contact us today for the right solutions for your business.

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