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Brand protection matters. Understanding Business & Domain Names vs Trade Marks

The following post is written from an Australian Legal perspective. 

Protecting your brands as valuable assets of your business.

When starting a new business it’s hard not to get excited about branding, business names and logo designs. But before you spend money on designing packaging for your products, website & stationery – make sure that the brand you have chosen is actually available to be used and can be protected.

Registering a business or domain name v’s registering a trade mark.

Registering a business name is a consumer protection measure which allows consumers to look behind a business name to see the identity of the person or company who owns that business.

While you may be quick to register a business or company name and a domain name, you may not have considered registering a trade mark as part of your brand protection strategy.

Why register a business name?

It is a legal requirement when you trade under a name which is not your personal or company name.

Your rights to the business name.

Business name registration alone does not provide exclusive rights to the use of that name.  Confusing right? You bet!  That’s where trade marks come in.

Only trade mark registration gives you ownership rights over a name (or logo, combinations of words and/or logos, or various other types of “signs”).

More on trade marks.

Only trade mark registration gives you ownership rights over a name  (or logo, combinations of words and/or logos, or various other types of “signs”)

Trade marks are used to indicate the trade origin of goods or services. By registering a trade mark connected to a brand, you will gain the exclusive right to use the registered mark throughout Australia or other countries where you may have filed the trade mark.

Importantly, registering a trade mark gives you the right to stop other businesses from using the same or a very similar mark in respect of the same types of products or services.

Yes, it does cost money and take time to register a trade mark – however, a registered trade mark is a valuable asset of your business which you can sell or license to others to use.

What to trade mark?

KEY TIPS

  • Choose a strong trade mark which consumers will remember easily but which does not directly describe your products or services.
  • The strongest types of trade marks are arbitrary words (for example, KODAK for cameras, which had no meaning other than as a trade mark) or fanciful words which do not directly refer to the particular goods on which they are used (think of APPLE for computers).
  • The weakest trade marks (and the hardest to register and enforce) are those which directly describe the goods or services, or are generic.

Trade marks are registered in 1 or more “classes” of goods and services:

  • Classes 1-34 cover different types of goods.
  • Classes 35-45 cover different types of services.

Visit xeno.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml to view all classes 1-45.

The appropriate classes for your trade mark registration will depend on the nature of your business and what your main goods and/ or services are.

You can register a trade mark yourself at IP Australia but note that this is a specialised area of law and it is easy for inexperienced filers to make a mistake.  Engaging an expert trade mark lawyer or attorney is the best way to ensure that your trade mark application is filed correctly and that any objections can be dealt with quickly and efficiently.

COSTS

A trade mark lawyer or attorney will charge you professional fees and there is also an official filing fee of $330 per class payable to IP Australia.

What are the risks of not registering a trade mark?

It is not compulsory to register trade marks in respect of your branding. However, if you do not do so and a competitor starts to use similar branding, it will be more difficult to get them to stop.  There are other available legal avenues to stop a competitor from engaging in misleading and deceptive conduct or passing off their business or products as yours, but these are often much harder, more time consuming and expensive to prove.

An experienced trade mark lawyer or attorney can help you ensure that your brands are secured and protected.

Getting started – Know where you stand

PERFORM A TRADE MARK SEARCH

Before committing to a brand (including a name or logo) for your new business, it is very important to make sure that another party has not already registered the same or a very similar name.  The only way to do this is to search the Trade Mark Register at IP Australia.

Just because a business name or company name is available to register on ASIC, this does not mean it is clear for you to use.  ASIC will not search the Trade Mark Register for you (although if you’re prepared to navigate through a few pages, the ASIC website does explain the difference between business names and trade marks and provides a link to the Trade Mark Register).

For more visit www.asic.gov.au/for-business/registering-a-business-name/before-you-start/how-to-protect-your-business-name/

You can do basic trade mark searches yourself or engage a professional such as trade mark attorney or lawyer to conduct more comprehensive searches for you.  I can’t stress enough that these searches should be conducted before you have invested time, energy and money in establishing a brand.  This is a worthwhile investment in your business, especially when compared with the alternative – ie, launching a brand and spending money promoting it and building up your business only to find that someone else already owns the name and has the right to ask you to stop using it and force you to re-brand.  This scenario happens all too often to small businesses!

Talk to a trade mark expert

If you would like more information about protecting your brand or other intellectual property assets, contact Shelley Einfeld on 02 9130 4623 or at shelley@einfeldip.com.au.