Registering a company or business name at the Companies Registry does not equate to having a trade mark. You must apply for a trade mark through the Intellectual Property Office, even if you already have a registered business. Trade mark law provides pre-determined causes of action in the case of infringement whereas, a registered business name does not provide any cause of action in itself. Trade marks can be owned by individuals or companies.

Business Name vs Trade Mark

A business name is used to identify a trader and in the case of limited liability companies, identifies a separate legal entity distinct from the individual. Thus, a business name is your corporate identity, however, it does not automatically grant you any exclusive rights to stop other traders from selling goods or services under your name. By contrast, a trade mark is an indicator of origin that grants you exclusive rights to use the trade mark in the course of trade for your designated goods and services.

What does ‘using’ a trade mark mean?

Use of a trade mark includes:

·      Applying the mark to goods including its packaging, and services;

·      Offering goods or services for sale under the mark;

·      Importing or exporting goods under the mark; and

·      Using the mark on an invoice, catalogue, business letter, business paper, price list or other commercial documents.

Why should I register a trade mark if I already have a registered business name?

Having a registered business name, while useful for conducting commerce, only prohibits the registration of similar business names. A registered trademark goes far beyond this by granting a broader scope of protection and can be more easily utilised to safeguard your brand(s). Some reasons why you should register a trade mark include:

1) Not every product or service being offered is reflective of a registered business’s name. If you are not objecting to the name of the business itself, your registered business name will be useless.

2) A business may also consider filing trade marks where they have multiple brands that differ from the overarching trading name.

3) A registered business name is not accompanied by any specific cause of action, thus where an alleged infringement occurs, the business owner will have to rely on the tort of passing off where they must prove goodwill, misrepresentation and damage. Whereas, a registered trade mark provides the mark owner with specific causes of action that can range from strict liability offences to merely having to prove a likelihood of confusion.

4) A registered trade mark provides a rebuttable presumption that your mark is distinct and validly registered for the designated goods and services. A business registration does not offer any security about the distinctiveness of your individual brands.

What is the difference between a company, a sole trader(individual) and a partnership (firm)?

A company is a legal entity. This means that a company can enter into contracts, purchase property, sue or be sued in its own name.

A sole trader is an individual who carries out business. While the sole trader’s business name can be used in the course of trade, the individual bears personal responsibility and liability when entering into contracts, purchasing property, suing or being sued.

A partnership or firm consists of two or more people who are both jointly liable as individuals.

All of these types of businesses are meant to be registered with the Companies Registry.

Can a business name be registered by someone else if I have a trade mark for the name?

Technically no. Under the Companies Act 1995, the ‘name of a company shall not be the same as or similar to the name or business name of any other person or any other association, partnership or firm, any registered trade mark or any well-known trade mark if the use of the name would be likely to confuse or mislead…’.

However, in practice this does not seem to be enforced, so one will have to object to a business registration at the Companies Registry.

In the event that a registration of a confusingly similar business name is allowed, trade mark law offers a robust cause of action to restrict the use of that business name. This means that the trade mark can restrict the actual use in commerce of the business name where it conflicts with the registered trade mark, regardless of its perceived legitimacy on the Companies Registry.

Do I have to register my business name before I register my trade mark?

No.

‍

If I register a trade mark and then incorporate a company, can I transfer the trade mark to the company?

Yes. 

The process to do this is called an assignment. It is a legally binding transfer that must be done in writing and signed by the owner of the trade mark to the compant.

‍

Do not make the mistake of thinking that your registered business name is sufficient protection in a competitive marketplace. Registering your trade mark helps you carve out your space, gives you statutory rights, and creates an asset for your business. Contact Clover® to begin your trade mark registration process.