Branding: Legal Issues

Photo: sauce bottles

The legal issues that are raised by branding, under Australian law, don’t fall neatly into one category. (Similar issues probably exist in other countries. This post focuses on Australia.)

Here are some of the issues:

  • If goods and services are sold under a registered trade mark, then the trade mark is protected under the Trade Marks Act, and action can be taken under that law against people using the trade mark without the authorisation of the owner. But, if a trade mark is not registered, that doesn’t mean there is nothing that can be done to stop other people using it. Remedies may be available under the law of torts (e.g. an action for passing off), and competition law, the Australian Consumer Law, to stop misleading and deceptive conduct. Indeed, these remedies are probably also available against most abusers of registered trade marks, but may not be implemented because the Trade Marks Act provides a straight-forward enforcement method. Trademark registration is an important way to protect product and service branding.

  • Registering a business name is a simple administrative process, and names are registered  by ASIC (the Australian corporate regulator) on a first-come, first-served basis. Where a name is similar to another party’s trademark, however, this may cause confusion. ASIC’s explanation of how business name registration works states that conflicts are checked only with other registered names and the names of government entities. That means that a person could register a business name only to discover someone else is already using it or a similar name as a trade mark. Whether trade mark law and competition law issues will be triggered by the use of the similar registered business name will depend on a number of things, including whether there is any possibility of confusion between the goods or services being sold by the two businesses. The name of a business may be different to its branding, especially if the business sells a range of different products and services all of which have separate brands, but it is important for both the business name and the brands to be protected appropriately.
    • Domain names are assigned and administered in Australia by auDA, which is a company, quite separately to trade marks and registered business names, which are administered by the Commonwealth (federal) government. While the government has power to intervene in matters that concern the usage of the nation’s telecommunications system, under the Telecommunications Act 1997, the  assignment, registration and deregistration of domain names, on a day to day basis, is handled by the company. This means that breaches of domain name usage rules are a matter of contract law, i.e. the registered domain name user’s agreement with auDA. And it is a primary rule of contract law that the only people who can enforce a contract are the parties to the contract. Outsiders don’t have a basis tor involving themselves unless the contract allows that. The policies that apply to domain name registration do contain protections, and it is possible for an aggrieved person to apply to auDA to reverse a registration if the name is considered misleading. Consistency of naming across domain identities, branding and business names may assist with the brand recognition of the products or services supplied by a business.



If parties discover themselves to be in a clash over the branding of products and services or the use of similar business names, it is very important to find out what rights each party may have to use the conflicting names under these different categories of legal authority.

[This post was written by Perth, Australia, commercial lawyer James Irving. Visit the Irving Law website for further information about the author and for free resources regarding many legal topics. The post is not intended as legal advice for any particular person. Photo credit: Nar eksisi by E4024 a public domain image published by Wikimedia Commons and used here under a CC BY-SA 4.0 licence.]

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