You open a letter from a trade mark attorney and read that another business has applied to register your business name as a trade mark. Or you search IP Australia's Australian Trade Mark Search on a quiet afternoon and find a live application filed by someone you have never heard of, covering the goods or services you sell. The name you chose, put on your signage and invoices, and built a reputation under is now sitting in someone else's application. This article explains what that means and the steps you can take to protect the name.
Why Registering Your Business Name Did Not Stop This
Registering your business name with the Australian Securities and Investments Commission (ASIC) does not give you exclusive rights to the name. The business names register is a list, not a licence. Registration protects you from another business registering an identical or nearly identical name on that same register, but ASIC is clear that it does not stop other people from using similar words or expressions in their business name, and it does not protect you against legal action if you use someone else's trade mark. The two systems are separate and run by different bodies: ASIC administers business names, while IP Australia administers trade marks, and you can hold both for the same name.
A trade mark is a different and more powerful right. Under s 17 of the Trade Marks Act 1995 (Cth) (the Act), a trade mark is a sign used, or intended to be used, to distinguish your goods or services from those of anyone else. If a mark is registered, s 20 of the Act gives the registered owner the exclusive rights to use the mark and to authorise others to use it in relation to the goods and services for which it is registered, plus the right to take infringement action. Registration lasts 10 years from the filing date unless the mark is cancelled or removed earlier.
That is why a trade mark registration over your business name is a genuine problem. Once it is registered, the other party holds exclusive rights over a name you have been trading under, and they may demand that you stop using it, threaten an infringement claim, or try to sell the mark back to you. The financial exposure includes the cost of rebranding, the goodwill you have built up, and legal costs. Two facts will shape everything that follows: when you first started using the name in trade, and whether the other party is actually using the mark.
Steps to Take When Someone Registers Your Business Name
Step 1: Check the Register and Map Your Own Use
Start by working out exactly where you stand. Find the application or registration in the Australian Trade Mark Search and note three things: the filing date, the goods and services it covers, and its current status. That status decides which of the steps below are open to you: a pending application can be opposed, while a mark that is already registered can only be challenged through removal or negotiation. Then reconstruct your own use of the name. The comparison that matters most is between the other party's filing date and the date you first used the name in the course of trade.
Gather the evidence now, while it is easy to find:
- Dated sales records: invoices, receipts, and purchase orders that show the name
- Marketing material: advertisements, brochures, and campaign material with dates
- Online presence: screenshots of your website, social media profiles, and directory listings, with dates
- Registration records: your ASIC business name certificate, domain name registrations, and ABN records
- Reputation indicators: revenue figures, customer numbers, reviews, press coverage, or industry awards
If you can show continuous use of the name in trade that began before the other party's application, you have the foundation for most of the options below. If you cannot, your options narrow significantly.
Step 2: Oppose the Application Within the Two-Month Window
The cheapest moment to act is while the application is still being processed. Once IP Australia accepts a trade mark application, it advertises the acceptance, and anyone can oppose the registration by filing a notice of opposition within two months of that advertisement. Extensions of time are available only in limited circumstances, so treat the two months as a hard deadline. Miss the window and the application can proceed to registration.
You can oppose on any ground set out in the Act. The three most likely to matter in this situation are:
- The applicant is not the owner: under s 58 of the Act, registration can be opposed on the ground that the applicant is not the owner of the mark, which points to your earlier use of the name in trade
- Your reputation: under s 60, registration can be opposed if your name had acquired a reputation in Australia before the other party's priority date and their use would be likely to deceive or cause confusion
- Bad faith: under s 62A, registration can be opposed on the ground that the application was made in bad faith, for example where it was filed purely to block you or extract payment, with no intention of genuine use
Before you commit to opposing, check what the application actually covers. If the mark is registered only for goods or services you do not supply and never plan to, the practical impact on your business may be small, and a negotiated outcome or simple monitoring may make more sense. If it covers the goods or services you actually sell, or a field you intend to move into, the stakes are higher and opposition is worth serious consideration.
An opposition is a formal proceeding with its own evidence stages, so it is not a quick letter. It is, however, usually far cheaper than fighting an infringement case after registration, and it is the point where your prior use of the name carries the most weight.
Step 3: Apply to Remove a Mark That Is Not Being Used
If the opposition window has closed and the mark is already registered, or if an opposition failed, your next option depends on what the owner does with the mark. A trade mark that sits unused can be vulnerable.
Under s 92 of the Act, a person may apply to the Registrar to have a registered trade mark removed from the register for non-use. This applies where the owner has not genuinely used the mark in Australia in relation to the registered goods or services for a continuous period of three years. An application can also be made on the ground that the applicant had no intention in good faith to use the mark when the application was filed.
A non-use application is not a formality. The registered owner gets the chance to show that the mark was used, or that circumstances prevented its use, and the removal itself can be opposed. But if the owner registered your business name and has simply sat on it, non-use removal is the direct route to clearing the register. Check first whether the owner is actually using the mark in your field, because if they are, this path is not available.
Step 4: Meet an Infringement Claim With Your Prior Use
If the registered owner threatens or starts an infringement claim against you, do not ignore the letter, but do not assume the position is hopeless. The Act contains a defence for people who were using a name before the trade mark existed.
Under s 124 of the Act, you do not infringe a registered trade mark by using an unregistered name that is substantially identical or deceptively similar to it, if you continuously used that name in the course of trade from a time before the earlier of the date of registration or the registered owner's first use. That is why the evidence you gathered in Step 1 matters: the defence turns on continuous use, not occasional use.
Two further points are worth holding onto. First, the registered owner's rights are limited to the goods and services for which the mark is registered, so a mark registered for one industry may not stop you trading in another. Second, if your use of the name began first, your own trade mark application may still be able to proceed despite the conflict, particularly where you can show continuous use of the name since before the other mark's priority date. Whether either point applies in your situation needs a careful comparison of the marks, the goods and services, and the dates, which is a job for a trade mark lawyer.
When to Bring in a Trade Mark Lawyer
Some of this you can do yourself: the register searches, the record-keeping, and the basic timeline. The formal steps are where a trade mark lawyer earns their fee. Opposition and removal proceedings run to strict deadlines and evidence rules, and an infringement claim carries real financial exposure if it goes wrong.
If you brought this situation to a trade mark lawyer, they would:
- run a full clearance search across the trade marks register and assess how the other mark compares to your name
- work out which opposition grounds you can actually prove, and whether your evidence is strong enough
- prepare and file the notice of opposition, manage the evidence stages, and represent you at any hearing
- negotiate with the other party, including a possible assignment of the mark, a licence, or a coexistence agreement
- prepare and run a non-use removal application, or defend one brought against your own mark
- advise on infringement exposure, the prior use defence, and whether your own application can proceed
Proceedings like these run for months rather than weeks, and the costs can add up quickly, so ask for a cost estimate before you commit. Most trade mark lawyers offer an initial consultation in which they can look at the application, your evidence, and the relevant dates, and tell you which options are realistically open and what each would cost. If you have received a letter demanding that you stop using the name, or the opposition window is open, do not delay: deadlines in this area do not wait.
The Window You Should Not Miss
The point to remember tomorrow is this: your ASIC registration was never a shield. The right that matters is your use of the name in trade, and the strongest moment to act is the two-month opposition window after IP Australia advertises acceptance. Once the mark is registered, your options narrow to non-use removal, negotiation, or defending an infringement claim, all of which are slower and more expensive.
A registered business name gives you a place on ASIC's register but no exclusive right to use the name, while a registered trade mark gives the owner exclusive rights over the goods and services it covers. If someone applies to register your business name, oppose within two months of the advertised acceptance, relying on grounds such as earlier ownership, your reputation, or bad faith. If the mark is already registered and has been unused for three years, apply to remove it for non-use. If you are sued, rely on your continuous prior use of the name. Before you choose a new business name, search the trade marks register first, and consider registering the name as a trade mark yourself.