Trade Mark Search Burdon Shifts to Small Business Owners
Trade Mark Examiners now require you to do your ‘due diligence’ before choosing a business name (checking someone else isn’t using it). Whether fair or not – this puts the onus on small business owners to check whether someone else has prior rights to the business name they’re planning on using.
What are trade marks?
Trade marks are ‘marks’ that are used to distinguish your business from other traders selling the same goods and services. A business’ name is the most common trade mark that people think to protect, but there are other marks, too, like tag lines and product names.
Registering a trade mark vs registering a business name
Most small business owners get tripped up when they assume that all they have to do to protect their business name is to register it. That’s not quite right. Although another business owner won’t be able to register the exact same name with the Australian Business Register (ABR), it doesn’t actually give you the protection you need.
For example, just because you registered the business name ‘Ally’s Baked Delights’ doesn’t mean that you actually have the right to use those words – nor can you necessarily stop others from using the same name. The only way to have the exclusive right to use your business name for your goods and services is to register it is as a trade mark with Intellectual Property (IP) Australia.
Unsure what other IP myths you’ve missed? Check out our blog.
Trade mark searches – Have you checked out?
Stay with us! We know that the idea of trade mark searches can seem like an unnecessary hurdle on the way to launching your business. You’ve googled it. The name is available on the ABR. That’s enough, right? Good to go.
Think again.
Comprehensive searches are now more important than ever in ensuring you have chosen the right business name. These are searches that you can engage a lawyer to undertake before you settle on a business name and are done to make sure that the name you have your heart set on is available and capable of registration.
This process (sometimes called ‘clearance searches’) involves detailed searches of the IP Australia register (checking for registered trade marks and marks that are in the process of registration), and other registers such as the ABR, ASIC company register, and more.
le check whether you need one by speaking to a lawyer – if you don’t have a privacy policy in place and you’re supposed to, you could be up for penalties.
Is your business name available?
When we talk about a business name being ‘available’, we mean that someone else isn’t already using it or something very similar to it, such that you wouldn’t be allowed to use it (yes, even if it’s available on the ABR). This is important, because if you start using a business name (or other trade mark) that belongs to someone else, your business is at risk of trade mark infringement (yikes!) or ‘passing off’ (kind of like the non-registered version of trade mark infringement).
While these legal terms are important because they mean someone could take legal action against your business, in practice, it’s important because it will probably stop you from using your business name – which usually means an expensive, annoying and time consuming rebrand – not to mention the risk that you could lose customers by having to change your name. Trade mark searches can give you the peace of mind that your business name is good to go.
‘But I didn’t know!’
Sometimes, a business will unknowingly trade under a business name that is more or less identical or ‘deceptively similar’ to that of a business with an earlier registered trade mark. This could happen because they lacked knowledge about trade marks or because they didn’t get the right searches done.
For example, let’s say that Pandemonium Cookies registered a trade mark in 2020. Separately, another cookie store started using the business name ‘Pandemonia’. In 2025, Pandemonia tries to register their business name as a trade mark but receives an objection from IP Australia on the basis that an earlier, very similar trade mark (Pandemonium Cookies) already exists.
There is currently an option available for Pandemonia, known as an ‘honest concurrent use’ application. This is where Pandemonia claims that they were using the business name ‘honestly’ without knowledge of Pandemonium Cookies (as opposed to simply copying the name – which could be passing off or trade mark infringement). This could allow both trade marks to be registered, even though they are very similar (which is usually not allowed).
Importantly, recent law (Fanatics, LLC v FanFirm Pty Ltd [2025] FCAFC 87) tells us that in considering whether a business used a name as a trade mark ‘honestly’, they will be looking at whether that business undertook the proper searches to check whether someone else was using that name first.
If you haven’t done the right searches and used a similar business name, your application could get knocked back and you could be stopped from using your business name – no matter how long you’ve been trading.
For this reason, we recommend that you get comprehensive searches done before settling on one of your most valuable business assets – your name.
Is your Trade Mark ‘Capable of registration’
When you’re choosing a business name, it’s also important to think about whether it’s capable of registration. In order to be ‘capable of registration’, a trade mark needs to be ‘distinguishing’ as opposed to ‘descriptive’. Descriptive business names usually run into trouble during registration because it’s likely they contain words that other businesses need to use in their ordinary course of business.
For example, selecting a business name like ‘Great Candles’, is descriptive of your goods, not distinguishing. It’s likely that other businesses need to be able to describe their goods in a similar way, so this business name probably wouldn’t make it to registration.
On the other hand, a business name such as ‘Raconteur’ in relation to candles is a good business name because it can be used to distinguish the brand from other candle sellers and isn’t descriptive of the goods.
The take away here is that it’s more important now than ever to make sure you check first whether your business name is available or if someone else is using something similar. If you don’t and you try and register a trade mark later, you could wind up losing your business name.
Ready to get started on your trade mark searches? Talk to us about our trade mark clearance searches.
As always, if you’re unsure, feel free to reach out to us.
Need some legal help? Book a Discovery Call
If you’ve identified something that’s affecting your business, or you’d like to discuss how these topics apply to you, you can book a free discovery call with Her Lawyer here.
