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Registering business names for clients

Peter Stewart

As an accountant you are most likely considered the trusted advisor or the ‘sounding board’ for many of your clients - a role that may see you advising them on new business pursuits. 

As part of this process, you are probably often instructed to register new business names. To make this process as smooth as possible for your client, we suggest you keep the following in mind:

Conduct searches 

Whilst you may be able to register any available name, the ASIC register doesn’t account for names that look or sound similar. In fact, provided there is one key stroke different, you will be able to register the name. It is important that you get into the habit of searching various platforms with the intended business name and variations of that phrase, to ensure your client adopts a name that doesn’t intentionally mislead consumers or cause confusion in the market place.  Also, your client’s should be aware that use of a name that is substantially identical or deceptively similar (be that visually or orally similar) to a registered trade mark may constitute trade mark infringement. 

If your searches return similar results 

If similar results come up during your searches, your clients should obtain legal advice.  The use of a similar name will not always amount to an infringement. Take for example the registrations of [AQUILA] and [AUQUA].

In the case of Aquila Pty Ltd v Auqua Swimwear Pty Ltd [2017] ATMO 46 (23 May 2017) it was decided that the mark of the latter wasn’t substantially identical nor deceptively similar to the former. Here, the Court found that a side-by-side comparison lead to clear visual differences between the two marks which outweighed any similarities the marks shared. Among the differences were the Latin meanings behind AQUILA (eagle) and AUQUA (a made-up word although there are similarities to ‘aqua’ meaning water).  

The Court further considered whether, when looking at AUQUA, a person of ordinary intelligence and memory would have the same impressions as when they looked at AQUILA. It was found that although the marks shared similar letters, there was no similar impression as a result of significant differences between pronunciation of the words. 

It was also hinted that made-up words are less likely to infringe on well-known words as people are more likely to remember a phrase or word that is conceptually understood. However, whilst the decision seems promising, the legal costs associated with such a battle would have been significant. A start up business should err on the side of caution to avoid significant time and costs being devoted to defending an infringement claim. 

To ensure that your client’s brand is adequately protected, you should keep the above in mind when registering a business name for them. 

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