The difference between a company name, trade mark and domain name
There is often quite a bit of confusion as to the difference between a company name, a trade mark and a domain name – what rights each of these give you, whether it’s necessary to have a trade mark if you have a registered company name / domain… the list goes on.
Company Name
What is it? A company name is the name under which a particular entity (e.g. private limited company, close corporation etc.) trades. A company name is registered with the CIPC on the Register of Companies and Close Corporations.
Common misconception? It is often thought that the registration of a company name means:
- You are not infringing anyone else’s rights; and
- You can stop someone else from using a name which is the same as / confusingly similar to your company name.
When providing the Commission with the proposed names of your company, you are required to confirm (on form CoR 9.1) whether the name/s you have chosen are the same as “a registered trade mark, a mark in respect of which an application for registration has been filed in the Republic, or a well-known trade mark…”.
The Commission therefore leaves it up to the applicant to ensure that their company name does not infringe the trade mark rights of someone else. There is no cross-referencing between the Register of Companies and the Trade Marks Register. In the event that the chosen company name does infringe the trade mark rights of another, the company may later be forced to change its name.
Without a registered trade mark, you have to rely on the common law delict of passing off (a form of unlawful competition) to obtain relief. Historically, this has proven incredibly difficult (and costly) to do and would certainly not be recommended unless there was significant use and a demonstrable reputation behind the company name.
What rights does it give you? A company name gives you the right to trade under that name. This can be challenged by someone with a registered trade mark, trade mark application or well-known trade mark in South Africa.
Trade Mark
What is it? A trade mark is a mark applied to the goods and/or services of the trade mark owner with the purpose of distinguishing their goods and/or services from the goods and/or services of another. A trade mark is commonly referred to as a “badge of origin” and can be in the form of a word, slogan, logo, company name etc.
A trade mark needs to be:
- Capable of being represented graphically;
- Capable of use as a trade mark; and
- Capable of distinguishing the goods and/or services of one person from the goods and/or services of another person.
What rights does it give you? A trade mark registration gives you the exclusive right to use your trade mark in relation to the goods and/or services for which it has been registered. With a trade mark registration, you are able to take action against any unauthorized use of your trade mark by way of trade mark infringement. The remedies include interdict, delivery up of infringing articles and damages.
Domain Name
What is it? A domain name is the name of your website (which is often the name of your company / product).
Domain names are registered in order of application as such, it is possible for a registered domain to infringe the rights of someone else. If a domain name takes unfair advantage of, or is unfairly detrimental to, the rights of the complainant (which includes intellectual property rights), then it may be deemed an abusive domain registration. If the complainant is successful, the registrant will be ordered to transfer the domain to the complainant.
What rights does it give you? A domain name gives you the right to offer a website under that name. This can be challenged by someone with (amongst other things) a trade mark registration.
Conclusion
Whilst there is an undeniable link between company names, trade marks and domain names, the best way of securing undeniable proof of your rights is through a trade mark registration.
If possible, before registering a company name or domain name, we recommend conducting a trade mark search to determine whether the name you have chosen infringes the trade mark rights of another.
Subject to the results of a search, we recommend filing a trade mark for the name of your company, product, domain name in order to provide you with the best protection.