What must a business owner do
to protect against a copycat business name?
The national business names registration system gives a
business owner little protection against a competitor who
copies their business name.
The reason for the lack of
protection lies in the limitations in the law - the
Business Names Registration Act 2011 (Cth) (the Act)
and the Business Names Registration (Availability of
Names) Determination 2015 (the Determination).
Added to this are the inconsistent decisions of the
Administrative Appeals Tribunal of Australia in deciding
whether or not two names are identical (or nearly
It is only by using the Australian Consumer
Law that some protection can obtained.
looks at these systemic failures, and ways to address them.
This is followed by marketing commentary by Michael Field on
the value of a checking business name availability.
The Business Names Registration rules – Is the
same name already registered?
Since 3 November
2011, business names in Australia have been recorded on the
National Business Names Register. The Register is
administered by the Australian Securities & Investments
Commission (ASIC). All state registered business
names have been migrated on to the national register.
Section 25 of the Act sets out these rules for name
A business name is available
to an entity if:
(a) the name is not identical or nearly identical to:
- a business name registered to another entity; or
- a name that is reserved or registered under the
Corporations Act 2001 for another body;
The Determination (updated in 2015) sets out - Rules
for determining whether business names are identical or
nearly identical to other names – to be used when an
application is made for registration of a name. ASIC has
a guide to the rules - Business name availability tests.
This is a brief summary of the rules used for
determining if a name can be registered:
- Only acceptable characters can be used in a name
– these are more or less limited to the numbers,
letters and characters on a standard keyboard. No
emojis, no non-English letters or non-Arabic
numerals, no logos, and so forth are acceptable.
- No offensive words, and no words which suggest a
connection to a Government or other body, are
- Words which sound the same, although written
differently, are considered to be nearly identical
and will be rejected. For example ‘Creative@Work’ is
considered nearly identical to ‘Kre8tive at Work’.
- Plurals and singular forms are interchangeable.
For example, ‘Children’ is the same as ‘Child’.
- The words ‘Pty/Proprietary’, ‘Ltd/Limited’ at
the end of a company name are to be disregarded, as
are domain extension and host name elements such as
‘www.’ and ‘.com.au’, as are spaces, ‘the’ and ‘a’.
- There is a long list of grouped words and
expressions taken to be the same (299 in all) - see
Schedule 1 of the Determination. For example,
barista, coffee, espresso (item 137) are taken
to be the same, as are state name abbreviations such
as Victoria, Victorian, VIC (item 282).
If ASIC does register an identical or nearly
identical name, the procedure that the owner of a
business name needs to follow to challenge the
registration is to request ASIC to review the
If ASIC does not agree to deregister the copycat
name, then appeal lies to the Administrative Appeals
Administrative Appeals Tribunal decisions on
business name challenges
been five Tribunal decisions dealing with identical
or nearly identical names since the national
register began. In each, ASIC took the inflexible
position that the rules in the Determination must be
strictly followed – especially Schedule 1 which
contains the list of items to be taken to be the
same. These are the case summaries:
- Was Central Coast Surf Academy (the
copycat name) identical or nearly identical to
Central Coast Surf School? The Tribunal
found that because the words academy and
school were not on the list as the same
words, then the two names were not identical or
nearly identical, and so refused the appeal
(refer  AATA 192 - 7 April 2014). This
decision led to the insertion of item 263 into
the list in 2015 which now makes academy
and school the same.
- Was Cairnscrete Pumping (the copycat
name) nearly identical to Cairns Concrete
Pumping? The Tribunal found that because
crete and concrete were not on the
list as the same words, then the two names were
not nearly identical and so refused the appeal
(refer  AATA 302 - 15 May 2014).
This decision led to an amendment of item 212 in
the list in 2015 which now makes crete
and concrete the same.
- Was Melbourne Children’s Psychology
Clinic (the copycat name) nearly identical
to Melbourne Child Psychology or
Melbourne Child Psychology Services? The
Tribunal found that children’s and
child are the same, as one is the plural of
the other (with the apostrophe disregarded); and
the words Clinic and Services are
not sufficiently different to avoid confusion by
reference to item 199 on the list, and so upheld
the appeal (refer  AATA 602 - 26
- Was Solar Repairs Perth (the copycat
name) nearly identical to the company name
Solar Repairs Pty Ltd? The Tribunal found
that the addition of the word Perth to the name
Solar Repairs was likely to create
confusion and so upheld the appeal (refer
 AATA 328 - 15 May 2015).
- Was Rainbow Beach Plumbing Services Pty
Ltd (the copycat name) identical or nearly
identical to Rainbow Beach Plumbing? The
Tribunal found that Pty Ltd was to be
disregarded, but refused the appeal because
adding the word Services meant that the names
were not identical or nearly identical. This
decision appears to be wrong because Plumbing
Services is item 220 on the list as being
the same as Plumbing (refer  AATA
768 - 30 September 2015).
The inconsistency between these decisions can
be explained by the fact that some Tribunal
Members agree with ASIC and take a literal /
objective approach to the law, while others look
at ‘the potential confusion created in the minds
of the persons who might be expected to deal
with the respective entities’, and consider that
ASIC should exercise its discretion where the
Determination does not strictly apply.
It will take an appeal to the Federal Court
of Australia to resolve the inconsistency.
What other options does a business have to
protect its trading name?
owners should start with self-help - which means
registering all variations of their trading name
as a company name or a business name. Then, the
business owner needs to register a domain name
for each of those names, and a trade mark with
those names (with or without a logo).
competitor succeeds in passing the ASIC business
name availability tests, an appeal to the
Administrative Appeals Tribunal is a relatively
inexpensive option, if the Determination
But often, a more direct approach is
needed to bar the competitor from using the
In that case, an application needs to be made
to the Federal Court of Australia for orders
under the Australian Consumer Law
(Competition and Consumer Act 2010 (Cth),
Sch 2). This is a case study:
Medical Service Co-operative Limited v Lakemba
Medical Services Pty Ltd  FCA 763
Sydney Medical Service has traded under the name
Sydney Medical Service since at least
1971. It provides an after-hours medical service
and home visits throughout the entire Sydney
metropolitan region and Wollondilly. In 2014-15
it provided 76,885 services. It has distributed
promotional material widely to 848,489
residences throughout Sydney in the past 2
Lakemba Medical Services registered the
business name Sydney Medical Services 2020
in late 2015 and commenced to trade under that
name in 2016. It provides an after-hours medical
service in the Lakemba region.
(Flick J) found that Lakemba Medical Services
had contravened section 18 of the Australian
Consumer Law (misleading or deceptive
conduct) and also section 29(1)(h) of the
Australian Consumer Law (a representation
that it is affiliated) by using a similar name
to provide similar services in geographical
areas which overlapped. Also the Lakemba Medical
Services website contained similar statements
about the services it provided.
ordered that Lakemba Medical Services be
restrained from using the name, and ordered it
to remove the name from its premises and motor
vehicle, its websites and its email accounts
within 7 days. As a footnote, Sydney Medical
Service is pursuing enforcement and contempt
orders because Lakemba Medical Services has
failed to comply with these orders.
The temptation for a
competitor who is starting up their business to
copycat the name of an established business will
often prove irresistible.
When that happens, it is worth checking
whether the ASIC business name availability
filters should have prevented the registration
of the copycat name. If so, an appeal is
Where, as in the Sydney Medical
Services case, the addition of ‘2020’ to the
name successfully circumvented the ASIC filters,
then the Australian Consumer Law provides
a suitable platform to stop the use of the
Marketing Perspective by Michael Field –
registration and protection is a serious and
ongoing issue for startup, small and medium
Startups and small businesses often
overlook basics such as business name search and
registration, securing domain names or
researching trade mark availability. It is often
not intentional, but rather due to limited
resources or a lack of focus as they are excited
and distracted by the new idea or the size of
are generally better resourced. New business and
product ideas are often developed in-house by
the brand, marketing or product team. As such,
there are not always well-established processes
for protection of that intellectual property.
Large enterprises generally have
dedicated, specialist resources and established
processes to manage the identification,
registration and protection of business names,
domain names and other intellectual property
such as trade marks.
As strategy consultants
for medium-sized B2B organisations, we have been
engaged on a number of rescue missions to
rebrand a business or product after many months
and tens of thousands of dollars had already
been invested in developing a business name or
brand that simply was not available.
associated with researching and redeveloping an
alternate business name, new logos, websites,
packaging, point-of-sale and collateral can run
into the tens or even hundreds of thousands of
dollars. This calculation does not include lost
time, wages, opportunity cost and the very real
potential for reputational damage.
advice is that before any marketing funds
are invested in developing a business name or
brand, there are three simple (and free)
searches that should be conducted in-house
before any new business name is decided. These
- Business name availability (ASIC)
- Trademark availability (IP Australia)
- Domain name availability (Ausregistry or
Once you have developed a shortlist of
preferred names, engage the services of a
legal professional to help you navigate
through the minefield of business name
registration and protection, especially
trade mark protection. A separate entity to
hold the name might be recommended for asset
The relatively small
cost of engaging a legal professional can
potentially save hundreds of thousands of
dollars on work that may be lost if the
preferred name is unavailable or later
contested. It also has the potential to save
unanticipated legal fees if the business or
product name is opposed.
It is always exciting to think of new
product ideas, brand extensions or
complimentary business services, but failing
to conduct basic checks for availability is
costly and can destroy a business reputation
before it is even launched.
This photo was taken at Edfu, a town near
Luxor, in Egypt (I didn't try the chicken)