Don’t let another business squat on your name – that’s the lesson for businesses today after it was revealed Bunnings has attempted to register the trademark of Woolworths’ hardware venture, Masters, in New Zealand.
But experts say while you should always register business names, trademarks and social media platforms as quickly as you can, there are still ways to take control of a business name if the holder isn’t using it.
Michael Bucks, an intellectual property and trademark lawyer, told SmartCompany this morning a trademark is more important than a business name.
“The trademark is the supreme trading right,” he says, pointing out there are rules and stipulations which come with a trademark application.
“You have to have a bona fide intent to work within the market in question, and if you’re not using the trademark or don’t have a bona fide intention to do so, that’s ground for opposition.”
“One of the big issues is this continuing confusion between business name registration and trademark registration.”
Bucks says owning a trademark can given a business certain advantages over just owning a name, such as the ability to confiscate domain names and other business names from those attempting to register the name, then profit by selling it back to the rightful owner.
“If Bunnings has registered Masters as a business name registration in New Zealand, they can do that, but that won’t necessarily give them an advantage.”
The incident is an example of a business which sits on a separate name which it has no intention of using, known as “squatting”. This type of action is common among businesses, especially across international borders.
However, the problem is much more popular online than it is in bricks and mortar. Chris Thomas, chief executive of digital marketing firm Reseo, says squatting can have its advantages, but businesses also need to look out for such activity – and register their names as soon as possible.
Thomas says you need to register your name as quickly as possible on all digital platforms to avoid this type of squatting.
“I would argue if your business depends on an online presence, you shouldn’t register a business name unless you can get the domain.”
Such activity isn’t just popular among small players. Local group buying company Scoopon made headlines in Australia for registering the Groupon.com.au domain name – the companies even ended up in court over the move and Groupon wrote a scathing blog post about the affair.
Thomas says your business should register everything immediately – including a Twitter account, Facebook account, domain name, and every other account you can think of. Then, SMEs should register domains in every country for which they’re considering an expansion.
“Secure domains in the markets you want, then you can just forward them to your own website.”
Patrick Stafford is a freelance journalist and a former deputy editor of SmartCompany.
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