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Can You Trademark a Personal Name?

Can You Trademark a Personal Name?

Personal Names can be trademarked in Australia in some circumstances. Find out what the legal requirements are in this article.

6th July 2020
Reading Time: 3 minutes

Registering a trademark is a valuable tool that helps distinguish your business from your competitors. Secondly, it also provides a valuable measure of consistency and quality for your customers. A wide variety of phrases, as well as certain shapes, sounds, and scents can be trademarked. However, not everything can be. As a business, you may wish to trademark your name to solidify the goodwill that you have built up over time. That being said, you may not always be able to. This article discusses whether personal names are eligible for trademark registration.

Trademarks – General Requirements

The Trademarks Act 1995 (Cth) provides a trademark is registrable if it is capable of distinguishing goods or services from the goods or services of other persons. A mark is capable of distinguishing goods if it is inherently adapted to distinguish. This capability is established when the use of the trademark would effectively distinguish the trademarked goods from the goods of competitors.

To be registrable, the trademark also must not be likely to cause confusion or deceive consumers, and cannot be too similar to another trademark. In Australia, there are 45 different categories trademarks can be registered under. Businesses may apply for registration in more than one category, however this substantially increases the cost.

With registration, trademark owners have exclusive rights to use and prevent others from using their trademark. They can also take action for the use of marks that are substantially identical or deceptively similar to their registered mark by competitors. The same trademark can be used by different traders, provided use is in different classes of goods and does not cause confusion.

Eligibility of Personal Names

Generally, it is possible to register a personal name as a trademark. However, the above factors all come into play when regulatory body IP Australia decides whether the mark is eligible. With this in mind, here are some key considerations;

  • Common personal names may be difficult to register. Firstly, the commonality of these names makes it difficult to distinguish them in relation to a particular class/classes of goods. Secondly, other businesses may have already established a reputation through use in the same class of goods that would prevent registration. It is possible, however, for a common personal name to become capable of distinguishing a business over time and to become registrable, provided it does not cause confusion with an existing trademark.
  • Uncommon personal names may be easier to register. This is because they more easily distinguished than common names.
  • Registration of personal names may be possible even if the same personal name has already been registered. However, this is only if a business intends to register a trademark in relation to a different class of goods than the existing mark.
  • Generally, as your personal name’s reputation develops, so too will its capability of distinguishing your business from other businesses. For example, business identity Dick Smith was able to trademark his name because of the notoriety he has developed over time.

To make an early determination if your personal name is likely to cause confusion, you can see if it has already been registered by conducting a trademark search.

Key Benefits

Some key benefits of trademarks include;

  • Authenticity – Consumers see the trademark symbol as a measure of authenticity. Trademarking is therefore often a useful marketing tool.
  • Exclusive Rights – Can prevent other traders from using the same personal name as a trademark and take action against them if they do.

Infringement – Personal Names

Individuals that have registered their personal name as a trademark are able to take action against others for infringement. This commonly entails another business using the same personal name in relation to similar goods and services. Occasionally, the other trader may, in good faith, not intend to confuse the marketplace. In this case, the law negates infringement. However, where the intention is to confuse or deceive consumers, the infringing trader is liable for penalties. These include damages and an account of profits.

Key Takeaways

  • Registering your name as a trademark can be a valuable commercial tool to improve your business.
  • Personal names are only registrable if they meet legislative requirements.
  • You can register your trademark online here.
Author
Alistair Maclennan

Alistair is a Legal Intern at Lawpath. He is currently studying a Bachelor of Laws at Macquarie University. He is primarily interested in how changes in the digital space influence business activity, privacy, and freedom of speech.