TRADE MARKS – WHAT’S IN A NAME?

Sharon Givoni Consulting Intellectual Property, Trade marks

When we brand things, our brains perceive them as more special and valuable than they actually are.

-MARTIN LINDSTROM

The word ‘Nike’ with its ‘swoosh’ logo and the word ‘McDonalds’ with its ‘golden arches’ logo are examples of world-famous trade marks.

So long as your business’ sign serves to indicate to consumers where the goods or services came from and distinguishes your goods and services from those of other traders, then that sign can (and should!) be registered as a trade mark.

Take away tips

  • Trade marks act as a badge of origin and an indication of quality.
  • Trade marks should be registered with IP Australia to get the best protection.
  • Business names, company names and domain name registrations do not give you rights over the name.
  • The process for registering a trade mark can be complex and you need to ensure that you are protecting the trade mark for the right goods and services.

Trade mark registration

The best way to obtain ownership rights in a brand name is through trade mark registration. It is the most effective way to protect your brand name and other elements of your brand identity such as logos and taglines.

Contrary to what many people might think, business, company and domain name registrations do not actually confer any monopoly rights over the brand name itself. Business name registration is an administrative step to let people know who is operating a business. Company name registration is likewise administrative, in that it is simply there to identify the name of a company. You don’t own domain names either—all that you get upon registering a domain name is a licence to use it for a set period of time.

In other words, none of these steps mean that you own the name—to do that, you need to register your brand name as a trade mark.

Benefits of trade mark registration

While trade mark registration is not compulsory, it confers numerous benefits, including:

  • exclusive rights to use your trade mark Australia-wide for the goods or services for which the trade mark is registered
  • subject to some exceptions, a legally enforceable right to stop others from using a trade mark which is too similar to yours in the same category of goods or services
  • it helps protect the goodwill and reputation that your business builds up over time
  • the right to lodge a ‘Notice of Objection’ with the Australian Customs and Border Protection Service to prevent imported goods which infringe your trade mark from entering the country
  • the right to display the ® symbol next to your trade mark to communicate a professional brand image and warn others of your registration rights
  • once registered, a trade mark becomes an asset and can be sold or licensed to others.

Before you apply to register a trade mark

There are various requirements that must be met before a trade mark can be accepted for registration.

The two main requirements are that the trade mark must be distinctive and there must not be other similar trade marks pending or registered for the same or similar goods or services on the trade marks register.

The trade mark registration process

The trade mark registration process involves a number of steps. You do not just apply for the trade mark and it is automatically registered. The earliest a trade mark can be registered is approximately seven-and-a-half months after the application is first filed. The main steps are outlined below.

  • Stage 1—File the application: The name of the applicant, the categories you cover and the decision as to whether you file a logo, tagline or words—separately or together—will all impact on the scope of protection granted, as well as the chances of the mark being registered. The filing date is also important, as trade mark protection will backdate to this date if your registration goes through.
  • Stage 2—Examination: Once you have submitted your application, your trade mark will be examined by a Trade Marks Examiner, who may accept the mark or raise issues with it. If a trade mark is not distinctive enough or is too similar to another pending or registered trade mark it will be rejected. Lawyers and trade mark attorneys can assist you to try and overcome such issues. If there are objections contained in the report, you will have fifteen months from the date of that report to overcome the issues before the trade mark will lapse, but extensions are possible.
  • Stage 3—Acceptance and advertisement stage: Once your trade mark is accepted, it is advertised in the Australian Official Journal of Trade Marks and anyone can oppose the mark within a two month time frame.
  • Stage 4—Registration: If no one opposes the application, the trade mark will be registered and a certificate of registration will be issued. Once it is registered you can use the ® symbol.

Great, so I am registered – so no one can take my name now right?

It is a common misconception that registering a trade mark gives you the right to use that trade mark exclusively across all goods and services. Not so. When you apply to register a trade mark, you have to choose what goods or services you want your trade mark registration to cover and then only get protection for those particular goods and services.

There are forty-five categories (known as classes) of goods and services to choose from (thirty-four are goods, eleven are services). Notably, each time you add a class, this will add to the government fee.

What our firm can do to help

While trade mark registration might be one of the last things that a business owner thinks about when creating a new brand, it should actually be one of the first.

Trade mark registration is the strongest form of protection.

Sharon Givoni Consulting can help you to get the intellectual property protection you need, for your trade mark in Australia and overseas.

Disclaimer: This article is of a general nature and not to be replaced with tailored legal advice.