THE Advisory Council on Intellectual Property, a Federal Government committee, has conducted an inquiry into the interface between trade marks and business names, company names and domain names.
Minter Ellison Peth contributed to this through a submission.
Our concerns were primarily with the business name registration system.
Business name registration is not a foolproof deterrent from use by a third party of the name.
A registered trademark provides an exclusive right to use that mark to distinguish the products or services of the owner from the products or services of third parties.
Registration of trademark secures a monopoly in that mark in respect of the specific classes of goods and services protected by the mark.
The monopoly is indefinite, provided the trademark is periodically renewed (in Australia, every 10 yeas for a period of 10 years). Trademarks are the principal form of intellectual property used in the branding or marketing of an enterprise or its products or services.
Trademark registration also provides prima facie evidence of ownership and control, which is not evident in unregistered trademarks.
A failure to register a trademark can lead to significant and expensive problems in asserting ownership and control with competing claimants.
Protection under the Trade Marks Act is contrasted with not only business names registration but also ASIC company registration and domain name registration.
A business name registration merely identifies who runs the business and does not provide any protection for the enterprise against use of the trademark by a third party.
A business name registration or an ASIC company name registration does not provide any significant level of protection against an infringement of an unregistered trademark. Business name registration only serves to notify the public as to the names of directors or partners involved in the business, the location of its registered office and its date of commencement of business.
A WA business name registration consequentially prevents someone from registering the exact same business name in WA but not in any other State.
It also does not prevent similar names being registered, in the same way as a trademark prevents the use or registration of similar names.
ASIC company name registration is of equal (limited) protective value.
Domain names are registered for the purpose of identifying a domain website and do not provide any rights against third parties using the trademark without the authorisation of the owner of the mark.
David Stewart, head of intellectual property
Graham Nagle, associate
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