Contact: Leigh Drummond, ESV (New South Wales, Australia)
The Federal Government has recently changed the business name registration system in an effort to prevent new business names being registered which are similar or identical to existing registered names.
Applications for new business names made on or after 14 July 2015 continue to be administered by ASIC as regulator and the changes do not affect any names that were already registered prior to this date.
However, applications made post 14 July 2015 are now introduced to subjective tests in order to determine whether one name is identical to, or nearly identical to, another business name. These tests include:
a) The use of the definite article or an indefinite article (a, an, the) will be disregarded unless it is the whole name.
b) If the name contains ‘Association’, ‘Co-operative’, ‘Incorporated’, ‘Limited’, ‘Ltd’, ‘No Liability’, ‘NL’, ‘Proprietary’ or ‘Pty’ this will be disregarded.
c) Whether a word is in plural or singular form will be treated as the same, e.g. the business names ‘Joe’s Pizza’ and ‘Joe’s Pizzas’ would be the same.
d) The size of the letters, the type and case of the letters, any accents, spaces between characters and punctuation marks will be disregarded, e.g. the business names ‘Joe’s Pizza’ and ‘Joes Pizza’ would be the same.
e) The order of words as they appear in the two names would be disregarded e.g. the business names ‘Joes Pizza’ and ‘Pizza Joes’ would be the same.
f) Domain name extensions such as www or .com are to be disregarded, e.g. the business names ‘Joe’s Pizza’ and ‘Joe’s Pizza.com’ would be the same.
Further to the above tests, ASIC will consider a number of supplementary tests to determine whether a new name is identical to an existing name. For example, ASIC has set out a list of words and expressions taken to be the same, such as ‘cakes’, ‘cake shop’ and ‘cupcakes’. Also on the black list are names that are pronounced the same as another name despite being spelt differently.
Business names also cannot utilise classified names in section 8 which provides an itemized table of characteristics to be considered when determining whether a name is undesirable or likely to be offensive to members of the public.
Unfortunately the changes to business name registration do not make the process easier and may result in having to compromise on the name you want because of identical or nearly identical existing registered names.
It’s important to remember that registering a business name doesn’t mean you own it and the last thing you want is for third parties to claim that you are operating a new business by reliance on their reputation, through a similar name. Generally, the only way to gain exclusivity over a particular business name is to register it as a trade mark with IP Australia.
If you would like more information around registering a business name, please contact your ESV engagement partner on (02) 9283 1666.
