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Same, same but different – why you can’t assume copycat names won’t be registered

16 October 2018

#Corporate & Commercial Law

Same, same but different – why you can’t assume copycat names won’t be registered

In a decision handed down on 28 September 2018, the Administrative Appeals Tribunal (AAT) upheld the right to register the name Perth Martial Arts Centre even though the name Perth Martial Arts Academy was already registered, on the basis they were not similar enough to prevent registration. 

The case is a reminder that when it comes to comparing business names, a common sense approach as to what constitutes an identical, confusing or misleading business name won’t get you far.

The facts

The case arose after Brazilian Combat Pty Ltd (Combat) registered the business name Perth Martial Arts Centre with the Australian Securities & Investments Commission in 2016 (ASIC). Shortly afterwards, Mr Victor Stuart (Stuart) lodged an application for review, on the basis that Combat’s business name was too similar to the business name Perth Martial Arts Academy which he had registered in 2006. Stuart argued that Combat’s name was:

  • identical in meaning
  • almost identical in the words used
  • confusing to customers
  • contrary to the objects set out in the Business Names Registration Act 2011 (Cth) (Act).

The decision 

In reviewing the decision, the AAT conceded that one of the objectives of the Act is indeed to avoid confusion by ensuring identical or nearly identical business names are not registered. However, they also noted that ASIC has no discretion in deciding how to achieve that objective – they are obliged to follow the rules set down by the relevant minister, which determine what is ‘identical’ or ‘nearly identical’ (Rules). If ASIC receives a paid-up application from an eligible entity and the name is neither identical nor nearly identical to another, then ASIC must register it.

Under the Rules, a name will be identical or nearly identical to another if:

  • it is pronounced the same way, regardless of spelling (e.g. Creative@Work and Kre8tive at Work); or
  • it appears in the list of identical names set out in the Rules.

The Tribunal conceded that:
Unfortunately for the Applicant, whether the two business names are identical or nearly identical is not simply a matter of common sense based on a simple comparison of the extent of the similarities between two business names. If one were to ask a person on the street whether the business names Perth Martial Arts Academy and Perth Martial Arts Centre were identical or nearly identical, they may very well agree that they were.

Instead, the Tribunal was compelled to defer to the existing schema set out in the Rules, which pays no heed to the ‘plain and ordinary’ meaning of a word in contemporary parlance, and instead adopts a far narrower approach that sets out an exhaustive list of words considered to be “identical”. The list considers institute, academy, school and college to be the same, but not centre.

On this basis, the Tribunal was precluded from finding the business names to be identical or nearly identical, and affirmed the decision to register Perth Martial Arts Centre. 

In making the decision, the Tribunal considered it worth noting that while academy and centre are not considered the same in a generic context, they are deemed identical when paired with the word dance (i.e. academy of dance, dance centre). The Tribunal observed that martial arts is an industry not entirely dissimilar from dance and suggested that Stuart may wish to consider lobbying the minister in this regard.

Key takeaways

The decision is a reminder that when it comes to assessing competing business names, do not rely on a common sense approach to whether a name is similar or identical. Key takeaways are:

  • don’t assume similar business names can’t be registered – registering a business name does not give you title or ownership to the name as it would for a trademark, and as this case reminds us, won’t prevent others registering similar names
  • protective registrations - businesses wanting to protect their brand, reputation and hard-fought goodwill may wish to consider registering multiple variations of their business names, to reduce the risk of competing registrations or customer confusion
  • alternative remedies - if a competitor is misusing your business name or attempting to present their business as related to yours, you may have alternative remedies to challenging their business registration, including actions for passing off, misrepresentation and misleading or deceptive conduct.

Authors:  Darren Pereira & Georgia Milne

Contacts

Sydney
Darren Pereira, Partner
T: +61 2 8083 0487
E: darren.pereira@holdingredlich.com

Melbourne
Dan Pearce, Partner
T: +61 3 9321 9840
E: dan.pearce@holdingredlich.com

Brisbane
Trent Taylor, Partner
T: +61 7 3135 0668
E: trent.taylor@holdingredlich.com

Disclaimer

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