Trade marks / Branding
Trade marks can refer to registered or unregistered trade marks. When I refer to trade marks in this book, I am mostly referring to registered trade marks.
Unregistered trade marks have many disadvantages, as set out later in this book. The main one being that a competitor could register your unregistered trade mark in their name and then sue you for infringement! You could probably win the trade mark back in a legal battle, but that could take years and land you with a legal bill of over $100 000.
Trade marks are also sometimes called brand names, and can include logos, advertising jingles, business names, company names, three-dimensional shapes, packaging and labels.
I strongly recommend that you register all of your brands, business names, company names and trading names, as trade marks for the reasons set out in the mini-book on trade marks.
More details on how to register your name as a trade mark can be found here
Hot Tip: Register your business or company name as a trade mark. If someone else has that name registered as a trade mark you will be infringing their trade mark, if your use is on goods or services similar which they have the trade mark registered for. You will still be infringing even if you registered the name before they filed the trade mark application. Infringing a registered trade mark could lead to serious adverse financial implications for your business.
Trade marks are important to protect your brand from being stolen by your competitor and other trolls.
There are trolls whose business model is nothing more than looking for emerging businesses without trade mark protection and then filing a trade mark for your brand and then charging a lot of money to sell the trade mark to you or that shuts you down.
Make sure that you register your trade mark for your brand. Note: an ASIC registered business name or company IS NOT a trade mark! A registered trade mark always trumps a business name. You need both a business name and a registered trade mark.
A registered trade mark is also an absolute defence to someone else alleging you have infringed their trade mark. Without it, you could be stopped if you infringe someone else’s trade mark rights.
Duration and Extent of Trade Mark Registration
Trade marks are registered for an initial period of 10 years. After that, they can be renewed every 10 years. Just like your car rego, if you forget to pay the renewal fee, and it will lapse, and you will not be able to reinstate it, you will have to begin the process all over again. You can lodge your trade mark details with us to receive free renewal reminders.
Trade mark protection is valid in the country in which registration takes place. So if you file for protection in Australia, that is where your protection will be. You can extend this to other countries within 6 months and still keep the original filing date (which is important because the first to file a trade mark application generally has the stronger rights).
Format of the mark for registration
Sometimes people want to know whether they should register their trade mark as a word-only trade mark, or words+logo, or only the logo. The best format for registration will depend on the individual mark and the circumstances (for example whether other similar marks exist and the descriptiveness of the words in the mark).
Specification and Classification
Our 2-minute video explains the difference between specifications and classifications in trade marks –
The specification should be carefully constructed to give the broadest possible protection.
Even if you trade under your own personal name, I recommend obtaining a trade mark registration, to avoid a competitor obtaining a trade mark registration for your name. While no one can prevent you from using your own personal name, they may be able to stop you using your name as your “trading name” if they have it registered as a trade mark. Having a trade mark registration can avoid future stress and expenses.
If selecting a new brand name or business name, it is preferable to do a trade mark search first, to make sure you do not infringe an existing registered trade mark.
Selecting a name which is not descriptive of your goods or services can make it easier to obtain registration for your trade to get registered.
Copyright in logos
If someone designed your logo for you, the safest option is to have something in writing from them saying they assign any copyright that may exist to you (or your company), even if they are a friend or family member.
Some designers have default terms and conditions that confer copyright ownership on them in any logo they design. If you do not own copyright in your logo, you will not be able to obtain a valid trade mark registration, nor will you be able to modify the logo without the designer’s permission.
Use it or lose it
If you do not use your trade mark on any of the goods or services in your trade mark for 3 years, someone else may apply to remove the trade mark. The trade mark will generally be removed for any goods or services on which you cannot prove “genuine commercial use”.
Email Cathryn for a copy of our “Lawyer In Your Pocket” mini-book relating to trade marks.