27/08/2015

A recent Determination sheds light on the matters to be considered when comparing similarities in registered business names.

Deciding on a name for your business is not an easy task. You might find yourself asking ‘how do I come up with a name that captures what my business is about, that’s professional, captures people’s attention, and is maybe a bit personal or even a bit funny?’

And on top of all of that, the name needs to be unique and set you apart from your competitors. It’s quite daunting really… but a recent determination is about to make things a whole lot easier when it comes to setting your name apart from all the others.

The Business Names Registration (Availability of Names) Determination 2015, made by Acting Assistant Treasurer Bruce Billson, at the direction of the Abbott Government, has clarified the factors to be considered when comparing the similarities of business names. The Determination aims to reduce confusion for consumers and also to protect the reputation of pre-existing businesses that are already registered, by preventing new businesses from registering an identical name.

According to the new guidelines, a name will be considered identical or nearly identical if, when considering a range of listed factors, the names are the same, or, despite differences in spelling or symbols used, the names are pronounced the same. For example ‘100% cats’ would be considered as the same as ‘one hundred percent kats’, or ‘Dollars and Cents’ would be the same as ‘$s & ₡s’.

So what factors are considered and what factors aren’t?

Firstly, the Determination includes a lengthy list of words in its Schedule which are considered to be the same as other similar words. For example, ‘barista, coffee, espresso and espresso bar’ are all taken to be the same, as are ‘chemist, dispensary, drug store and pharmacy’. Accordingly, “Bob’s chemist’ will be considered to be the same name as ‘Bob’s pharmacy’.

The order of the words in the business name, the size, font, punctuation and number (ie singular or plural) are just some of the matters which will be disregarded when comparing two business names. The Determination also includes restricted words and expressions, some of which cannot be included in business names unless prior consent is given.

What does this mean for potential business owners?

It is important that you research business names that are already in the market before registering your own business name. It is much more time and cost effective to put in effort to see if your proposed business name is available first, rather than having to deal with an infringement of trade mark or ‘passing off’ claim in the future. In other words- it’s better to be safe than sorry!

Please contact Townsends Business and Corporate Lawyers for further information.