Registration of Business Names: “Potato, potahto, Tomato, tomahto.“
I recently highlighted some of the issues faced by businesses when other businesses have a similar name - Using a Generic Brand Name – It’s a Double-Edged Sword, where Tim Bishop, the owner of ‘MAN WITH A VAN,’ has had to take legal action to stop others from using the business name or variations of it.
Well, an update to the Business Names Registration Rules is about to make life a lot easier for business owners like Tim. The update is perhaps best explained by the famous lyrics from the Ella Fitzgerald song "Let's Call the Whole Thing Off.”
“Potato, potahto, Tomato, tomahto”
The Business Names Registration (Availability of Names) Determination 2015 kicked in on 17 July 2015 and sets out the rules for determining if a business name is identical or nearly identical to another name. These rules aim to reduce the risk of the public being misled by nearly identical business names.
Subsection 5A of the Determination provides that a business name is identical or nearly identical to another name (other than a company name) if, and only if:
- After comparing the business name with the other name (disregarding certain matters and applying others) the names are the same; or
- the business name is pronounced the same as another name despite being spelt differently. For example: “Dollar Shop” is the same as “$ Shop.”
What matters are not considered?
The following are some of the matters to be disregarded when comparing whether two business names are identical or nearly identical:
- Use of “Association,” “Co-operative,” “Incorporated,” etc
- words in a pural form and singular form will be treated as the same
- the size of the letters, the type and case of the letters, any accents, spaces between characters and punctuation marks
- the order of the words as they appear in the two names. For example: “Rita’s Shoes” would be the same “Shoes Rita”
- domain name extensions such as “.net” or “.com.”
What matters are considered?
Under Subsection 6(1) any word or expression in an item in Schedule 1 of the Determination is taken to be same as each other word or expression in the item. Examples of the items contained in Schedule 1 are as follows:
- Bicycles, bikes, cycles
- caterers, catering, catering services.
The Determination should be welcomed with opened arms. Not only does it reduce the risk of confusion between two companies, it makes it harder for another business to adopt a nearly identical name to yours, taking advantage of the existing reputation and goodwill your business has (as experienced by ‘MAN WITH A VAN’ and countless other businesses).
If you’re starting a business, choose your business name carefully - and only after you’ve done your due diligence. Identical or nearly identical names should be avoided for two reasons: firstly, you’ll improve your chances of obtaining business name registration but secondly, also make sure your proposed name doesn’t infringe any registered trade marks.
In short, when it comes to “Potato, potahto,” you’re far better calling the whole thing off and coming up with something uniquely yours.
If you’re unsure whether your proposed business name is capable of registration or whether your proposed business name infringes a registered trade mark, you should you obtain legal advice as soon as possible. Invest time and money in choosing the right name so as to avoid the need and costs associated with an infringement action or re-branding your whole business:
Rita Khodeir, Senior Associate
Phone: 02 9895 9250