Your business name is on the ASIC register, the website is live, and the first orders are coming in. Then a customer, a supplier, or your accountant asks a question you had not quite answered: have you trademarked it? The question tends to arrive at one of two moments. It arrives at the start, when you are choosing between candidate names and about to commit money to branding. And it arrives later, when the brand has started to mean something and you realise that nothing stops another business from trading under a name that looks and sounds like yours. Both moments lead to the same decision: whether to register the name as a trade mark with IP Australia now, or to keep trading on the business name registration alone.
The decision behind the question
The question "is my business name trademarkable?" hides two separate questions, and it helps to separate them before weighing anything else. The first is legal: does the name satisfy the tests IP Australia applies, so that it can be registered at all? The second is commercial: given what registration costs and what it actually protects, is it worth doing at this stage of the business?
There are three paths in front of you. You can apply to register the name as a trade mark, either through IP Australia's standard application or through its TM Headstart pre-application service. You can do nothing and rely on your ASIC business name registration together with whatever protection unregistered use gives you. Or, if the name turns out to be unregistrable, you can rebrand before you have spent too much on signage, packaging and domain names.
Two assumptions usually need correcting before the decision makes sense. First, ASIC registration is not brand protection. Registering a business name is a compliance step that lets you trade under a name that is not your own, and it stops other people registering the identical or nearly identical name. It does not give you exclusive rights to the name, and ASIC says so plainly: only a trade mark can give you those rights. Second, there is no such thing as "trademarking a business name" in the abstract. A trade mark application is for a specific sign, such as a word, a logo, or a combination of the two, and it covers particular classes of goods and services. The same word can be perfectly registrable for one class of goods and blocked for another, which is why "can this name be trademarked" is never answerable without asking "for what goods or services".
What your ASIC registration actually gives you
Before weighing registration, it is worth being precise about what you already hold. A business name registration with ASIC is a legal requirement if you carry on a business under a name that is not your own name. The register is a public record, and ASIC will not register a name that is identical or nearly identical to one already on the register. That is where the protection ends. Three limits are worth knowing:
- No exclusive rights: ASIC's guidance is direct on this point. Registering your business name means no one else can register the same name, but it gives you no exclusive right to use it and no proprietary interest in it.
- A time-limited compliance step: business name registrations run for one or three years and must be renewed, or ASIC may cancel them. Renewal notices arrive at least thirty days before the registration lapses.
- No shield against trade marks: registering a business name that happens to be someone else's registered trade mark can land you in legal trouble. ASIC does not search the trade marks register before accepting a business name application, so a name can sit comfortably on the ASIC register while infringing a mark held by someone else.
You will need the ASIC registration regardless of what you decide. Holding a registered trade mark does not remove the obligation to hold the business name, and the two registers do different jobs. The point of the exercise is to understand that your current registration is the floor, not the ceiling: it is the legal permission to trade under the name, and nothing more.
The factors that decide the call
Can the name clear the distinctiveness bar?
The first test is about the name itself. Under s 17 of the Trade Marks Act 1995 (Cth), a trade mark is a sign used or intended to be used to distinguish your goods or services from the goods or services of anyone else. Section 41 turns that definition into a gate: an application must be rejected if the trade mark is not capable of distinguishing the goods or services you apply for from those of other persons.
Names that merely describe what you sell generally fail this test, because every competitor in the trade needs to use those same words, and none of them should be able to fence them off. Geographic names and common surnames run into the same problem. A name like a suburb, a river, or a family name is treated as something other traders may legitimately need to use, unless the applicant can show the name has been used long enough and widely enough to have built up what the Act calls acquired distinctiveness, so that customers now associate it with one particular business.
The strongest candidates are coined or invented words, or words with no obvious link to the goods or services they are attached to. And the test is always applied to the specific goods or services in your application. A name that is merely descriptive for one class of goods may still be distinctive for another, which is one reason the choice of classes matters as much as the choice of name.
Does an earlier mark already stand in the way?
Even a distinctive name will be rejected if it collides with what is already on the register. Section 44 of the Act requires an application to be rejected where the proposed mark is substantially identical with, or deceptively similar to, an earlier trade mark that is registered or being applied for in respect of similar goods or closely related services.
This is where people get caught, because they check the wrong register. The ASIC business name register is not the trade marks register, and ASIC does not search it on your behalf. Checking your name properly means searching IP Australia's trade marks database for existing marks in the classes you intend to use, and thinking about unregistered marks as well, because a business with a similar name and an established reputation may still be able to oppose your registration or object to your use even without a registration of its own. The practical result is that a name can be free on the ASIC register and blocked on the trade marks register, or clear in one class and blocked in a neighbouring one. None of that is visible from the ASIC certificate you already hold.
What registration actually buys you
If the application succeeds, the rights are real. Registration gives you exclusive rights to use the mark in Australia in respect of the goods and services for which it is registered, and the ability to take infringement action under s 120 of the Act against someone using a substantially identical or deceptively similar sign in relation to those goods or services. Where a mark becomes well known, the protection extends further, to unrelated goods and services that would be taken as indicating a connection with you. Four practical details of the rights are worth knowing:
- The registered symbol: you may only use the ® symbol once the mark is actually registered. Before that, the ™ symbol signals your claim without the registered rights.
- A renewable asset: a registration lasts ten years before renewal, and it can be sold or licensed. If you ever sell the business, the mark is part of what you are selling, and it is one of the few assets that can appreciate as the brand grows.
- The limits: the rights are territorial, so an Australian registration protects you in Australia and nothing else. Protection in other countries requires separate registrations there. The rights are also class-based, so they track the goods and services you actually registered and nothing wider.
- Use it or lose it: under s 92 of the Act, a third party can apply to have a registered mark removed from the register where it has not been used in good faith in Australia during the preceding three years. A registration is not a one-off purchase. It is an asset you have to keep using if you want to keep it.
What it costs in time and money
Registration is not expensive at the application stage, but the full cost depends on how smooth the process is. A standard online application for a single class of goods or services starts at around $250 AUD, and each additional class adds another fee. IP Australia's TM Headstart service costs from $330 and gives you an examiner's assessment before you formally file, which suits first-time applicants who want to fix problems while they are still cheap to fix. Beyond the application stage, three things shape the real cost:
- Time: IP Australia quotes a minimum of around seven months from application to registration, and that assumes a clean run.
- Objections and oppositions: if an examiner raises an issue, or a third party opposes the registration, responding takes time and usually professional help. Legal fees at that stage typically dwarf the filing fees, which is another argument for getting the assessment right before filing.
- Ongoing costs: the registration must be renewed every ten years, and your business name registration must be renewed every one to three years on a separate clock.
None of this is a reason to skip registration if the name matters to you. It is a reason to run the assessment early, before the name is locked into your branding, your domain, and your packaging, because the cost of changing a name later is always higher than the cost of checking it first.
Where a trademark lawyer earns their fee
Most of the risk in a trade mark application sits in the two questions above: whether the name will be accepted as distinctive for the classes you need, and whether anything earlier stands in the way. Both are answerable before you file, and both benefit from professional judgement. An Artificer Legal practitioner would start with a clearance assessment, searching IP Australia's register and the market for identical, similar, and deceptively similar marks in the classes you actually trade in. They would then give you a view on distinctiveness, including whether your history of use is strong enough to overcome an objection, and help you decide which classes to claim, since getting the specification right is what determines the scope of the protection you end up with.
If the application hits an adverse report or a third-party opposition, a lawyer drafts the submissions and evidence in reply, and advises whether to push on or narrow the specification. If you are buying or selling a business, they will check that the mark is validly registered, properly assigned to the right owner, and genuinely used, so the asset you are paying for is actually enforceable. The value of that work is not in filling out forms. It is in stress-testing the assumption that the name is protectable before you build the brand around it, and in keeping the mark enforceable once you have it.
The question to answer before you spend on branding
The decision you are really making is whether the name can distinguish your goods or services and survive contact with earlier marks. That is knowable early, and it is the question most people answer too late, after the signage, packaging, and marketing have committed them to a name that cannot be registered, or that collides with a mark someone else already owns. If the name clears the tests, registration is a modest cost for a ten-year renewable asset that protects the brand you are building. If it does not, the cheaper path is to find out now and rebrand while the change still costs nothing.
To summarise the key points: the ASIC registration is a compliance step, not protection, and it gives you no exclusive rights. A trade mark application is examined for distinctiveness and for conflicts with earlier marks, it protects only the classes you register in Australia, and the rights have to be used to survive. The process takes months rather than weeks, so the assessment is worth doing before you need the protection, not after the brand is already on the wall.