Home – New Forums Starting your journey question in regards to business name & domain names

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  • #991283
    priskin
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    Hey Guys!

    I’ve registered a domain called example.com.au but the business name example has already been registered.

    Would it be a problem if i registered it under Example co and used example.com.au?

    Would I run into any legal issues using that domain name?

    my domain name: example.com.au
    someone elses business name: example

    my intended business name: example co

    #1180774
    nikmaricic
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    Hi priskin,

    Valid question you bring up. I’m no legal expert, however I believe that if you own a domain name – you cannot be stopped from using it. There are people preconceive business names and then purposely buy domain names so that they sell it to those businesses at a premium.

    Provided you are the owner of the domain, I don’t see an issue with you using it; especially since your business name is still in the domain. Only issue I foresee is if “example” wants to sue “example co” for infringements against using their brand name in promoting themselves, especially if it is in the same industry. However, to be sure check out http://www.ipaustralia.gov.au/ to see whether there are any trademarks on the name or branding. But I will stress that you tread carefully because of copyright laws – if someone else came up with a name that is extremely similar and in the same/similar industry; copyright laws protect them. You might save yourself serious headaches in the long run to just rethink your business name and domain. If you do go down this path, just think of the money you spent on the domain name and business name “example co” as a lesson learnt, and avoidance of a potential lawsuit in the future.

    #1180775
    Anonymous
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    Hi priskin,

    It’s complex and confusing, isn’t it?

    This isn’t my area of expertise, but we have a few IP specialists around here who can probably give you some general pointers on this, so I have my fingers crossed that you’ll receive a definitive answer soon.

    Best of luck with it,
    Jayne

    #1180776
    bb1
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    priskin, post: 210840 wrote:
    Hey Guys!

    I’ve registered a domain called example.com.au but the business name example has already been registered.

    Would it be a problem if i registered it under Example co and used example.com.au?

    Would I run into any legal issues using that domain name?

    my domain name: example.com.au
    someone elses business name: example

    my intended business name: example co

    Sounds like there could be a lot of confusion between the 2 names. Also would they allow you to register the business name been so close to the other. I know when I was going for business names they rejected anything which was similiar to an existing name. But my main worry would be the confusion are you example or example co

    #1180777
    priskin
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    Thanks for the advice everyone!

    What if i added an extra word onto my business name?

    something like ‘example cleaning co’

    #1180778
    ShellysBookkeeping
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    When you go to register your business name, it will essentially tell you if its too similar to another registered name.
    Apart from the legalities – if your business name is very similar to another have you thought about brand confusion. Also if people are searching for you, they may end up at competitors site. If competitor does dodgy work and has a bad name how will that reflect upon your business.
    Choosing a business name is hard, especially when your first choice is taken.

    Shelly

    #1180779
    priskin
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    ShellysBookkeeping, post: 210877 wrote:
    When you go to register your business name, it will essentially tell you if its too similar to another registered name.
    Apart from the legalities – if your business name is very similar to another have you thought about brand confusion. Also if people are searching for you, they may end up at competitors site. If competitor does dodgy work and has a bad name how will that reflect upon your business.
    Choosing a business name is hard, especially when your first choice is taken.

    Shelly

    I’m not really worried about brand confusion. I’m more worried about the legalities around it. lets say I’ve registered something like ‘example cleaning co’ and my domain name is example.com.au

    would it be illegal to do the following?

    – creating logo with ‘example’
    – picking up the phone as ‘example’
    – creating local listings with ‘example’

    also would a trademark allow me to trade under that name? I’ve had a look and it doesn’t look like it has been trademarked

    #1180780
    nikmaricic
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    I guess it comes down to potential copyright, i.e., if you call your business one thing legally but refer to it in another way. And also other great post was in regards to potential brand damage due to “example” having a bad name in the industry.

    I think you should have a chat to an IP lawyer to be 100% on the safe side…

    #1180781
    JacquiPryor
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    Hi there,

    Firstly, to clarify – your ‘examples’ are definitely under the area of Trademarks rather than copyright. Trademark registration would be the appropriate protection for a name. It can be tricky to answer questions based on example names, but I hope the following helps.

    Trademarks are registered in connection with the particular activities relevant. So, if the other business does have a trademark registered but they’re not in the same line of work it’s less likely there would be an infringement issue.

    Registering the trademark will not provide you the right to trade under the name; for this you will still need to register the business name.

    In short if you register “Example Cleaning Co” (which would be found different enough to simply Example by ASIC) then this entitles you to hold the domain example.com.au.

    Assuming that your use of Example is not likely to infringe a registered trademark, or fall under the areas of “passing off” and similar then you could create and promote a logo that features this name. I would encourage you to register your own name or logo as your trademark to ensure its ongoing safety and protection.

    If you have registered Example Cleaning Co (rather than simply Example) as the business name, it needs to be clear that this is your trading name when you are communicating your business. I would therefore encourage answering the phone as “Example Cleaning Co” and, you should include the full trading name in any directory listings etc. However, if you do have your logo registered as a trademark then you are entitled to use it – so, in a directory listing that allows images you could upload your logo (that’s simply based on Example) so long as the additional information identifies the business by its registered name.

    As others have mentioned, you want to avoid brand confusion – but, the main reason you need to register a business name (and therefore display it appropriately) is so that there are records kept of who is running a business in Australia in case another person needs to access information about the operators of the business or serve papers etc.

    So, if you were displaying only “Example” and answering the phone as ‘Example’ etc rather than your full name then consumers/others would struggle locating your full business information if needed; they’d then likely look up the business name and find the other “Example” business that has been registered rather than you/your business.

    This could have an adverse affect in the situation (for example) if they did need to serve papers or make complaints – they’d end up doing so with the wrong entity. So, it’s important to ensure consumers can identify your business properly, which would involve you ensuring that the full name is available in listings/advertisements etc.

    I hope this assists?

    #1180782
    priskin
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    Thanks JacquiPryor for the very useful information!!

    I’ve got another question that you may be able to help me with.

    Lets say there was a trademark called Life Made Simple, would I be causing an infrigement easy if I registered and used the name ‘Made Simple’?

    it would be both in the same industry

    #1180783
    JacquiPryor
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    Hi,

    There’s no simple ‘yes or no’ to these sorts of questions. Most often infringement is a case-by-case scenario that involves investigation and advice.

    The short answer is ‘possibly’.

    Infringement, as a very general idea, occurs if someone uses an unregistered sign as a trademark that is the same or deceptively similar to a registered trademark, and they are doing so for the same/related goods or services.

    The simpler question is usually “is there likely to be confusion because of the similarities?”. If the answer is yes, then quite possibly there would be grounds for the trademark owner to allege infringement to be occurring.

    The Trade Marks Act also allows situations where infringement is taken to have not occurred – for example, the alleged infringer actually has the earliest use of the particular trademark in question for those goods/services.

    Also – be mindful that if you do register a name as a trademark and use it then this won’t be infringement. One trademark owner cannot take action against a person that is using a trademark that they’ve been afforded the right to use.

    I note the above is relevant to trademark infringement, this is not to say a person may not have grounds to act under other areas of law even if you have secured a trademark registration, but generally it is less likely action would be instigated against a trademark holder.

    #1180784
    bb1
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    priskin, post: 210985 wrote:
    Thanks JacquiPryor for the very useful information!!

    I’ve got another question that you may be able to help me with.

    Lets say there was a trademark called Life Made Simple, would I be causing an infrigement easy if I registered and used the name ‘Made Simple’?

    it would be both in the same industry

    But do you want the confusion with another business from a similiar industry, you could loose business.

    Or are you aiming to collect clients by them going to the wrong business.

    #1180785
    webtrade
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    I don’t believe the use of the domain name is of any concern, however the business/trading name needs to be considered very carefully.

    #1180786
    Your Local Tyre Truck
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    Hi All,
    sorry to hijack this thread, but I have a similar question. Rookie mistakes have been made, and I am getting overwhelmed….
    I firstly registered the 2 domain names below, but did not register my business name.
    example.com
    example.com.au

    I have just found out that my awesome business name if not available, as its too close to another registered name. (Should have done this much earlier)
    So, I checked another business name “Your Local example”. This is what I will register as my official business name.

    Can I still use the above domain names?? Soooo confused by all of this, sorry if this question has been done to death.
    Needing a rookie type/simple answer

    Thanks Chris

    #1180787
    James Millar
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    priskin, post: 210840 wrote:
    Hey Guys!

    I’ve registered a domain called example.com.au but the business name example has already been registered.

    Would it be a problem if i registered it under Example co and used example.com.au?

    Would I run into any legal issues using that domain name?

    my domain name: example.com.au
    someone elses business name: example

    my intended business name: example co

    Apart from the obvious complications with Trademark law, Passing off and potential Misleading and Deceptive Conduct under the Competition and Consumer Act 2010 (previously the TPA) there are general business name compliance requirements. They are

    Sect 18(1) of the Business Names Registration Act 2011 (now Cth law) – an entity commits an offence if the entity carries on a business under a name and that name is not registered to the entity as a business name on the Business Name Register.

    However Sect 18(2) provides a range of exemptions from this offence and the main one relevant here is related to the use of domain names. This Act refers across to the Regulations which state at Reg 4 (1) an offence above does not apply “if that entity is carrying on a business under the domain name form of a business name that is registered to the entity and the entity is not prevented from using that domain name. There are some examples contained in the regulations here http://www5.austlii.edu.au/au/legis/cth/consol_reg/bnrr2011420/s4.html

    I believe it would allow you to trade as a business name being exactly “example.com.au” only. That would be your actual business name (albeit unregistered) as well your domain name.

    Take a look at the examples. Note the other laws stated could make it difficult for you to trade under these names so get some detailed legal advice.

    Helping build better businesses and better lives with expert financial and taxation advice. [email protected] www.360partners.com.au 03 9005 4900
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