Many businesses choose to include a geographical place in their business name. Using a suburb or location communicates to customers where a business is located or from where their products originate. This is effective in helping to build a local client base and enhancing a business’ reputation.
The inclusion of a geographical place in your business name, however, may make it difficult to register that name or logo for a trademark.
Trademarking a business name or logo
In order to trademark a business name with IP Australia, you must satisfy the distinctiveness test. The ability to register a trademark is determined by whether the business name or logo is new and distinctive from any other names or designs that have been registered through IP Australia or that may be registered in the future.
To have a valid trademark, therefore, it is essential that your business name and design is distinguishable from other businesses. A business may be prevented from registering their trademark if their name or logo is identified as being too similar to that of another business.
Registering a geographical place name
For this reason, it is difficult to trademark a business name with a geographical term because this prohibits any other businesses that are operating in the same location to promote their goods or services. IP Australia considers this to be an unfair monopolisation of a geographical term.
It is particularly difficult to register a trademark with a geographical place name if the location features a range of goods and/or is a location name found commonly across Australia.
To circumvent these location hindrances, there are two ways that a business can trademark a geographical place name:
- Stylised Logo
- Ongoing Use and Community Recognition
According to IP Australia, if a logo depicts a “highly stylised” or “unusual representation” of particular goods, services, or locations, it may be sufficient to satisfy the distinctiveness test.
If a logo portrays a conventional depiction of goods, or includes a map or national symbol, it is not likely that the trademark will be validated. This means that if a business were to use a common geographical place name, they would need to make sure their logo design is highly distinguishable so it is able to be registered as a trademark.
Ongoing use and community recognition
As an alternative to creating a distinctive name or logo, if your business is able to demonstrate that you have used a geographical place name extensively over time, IP Australia may accept the trademark based on ongoing use and community recognition.
This involves submitting evidence to prove you have continuously used the geographical place name in the market for a period of at least three years, and that customers distinguish your goods and services from others in the area on the basis of that geographical name. For more information on the benefits of registering a trademark for building brand awareness and strengthening your business reputation, please see our blog.
How Etheringtons Solicitors can help
A solicitor at Etheringtons Solicitors can provide clarification of the relevant law and its relation to your individual circumstances. If you need further advice or assistance with IP law matters, please contact one of our experienced solicitors on (02) 9963 9800 or via our contact form.