We first met Fi Nguyen when she came to us looking for a fresh, new logo and website for her business Girl Friday IP, a modern business that guides creatives and small businesses through the foggy world of intellectual property. Right from the get-go we knew Fi had that something special about her. She was smart, she was funny and just downright cool. She spoke with clarity and made sense of all the legal mumbo-jumbo that creative and small businesses, like Smack Bang Designs, couldn’t wrap their brains around. Read on as Fi gives us the lowdown on trade marking, as told in her own words.
Anyone who has recently gotten their mitts on a copy of Smack Bang’s ebook will know which of the chapters was one of my favourites. Hint: it was The Low-Down On Trade marking. I’m biased obviously and I make no apologies for this. Boss lady Tess laid out some really helpful talking points for trade mark protection, and now I’m here to take you for a deeper dive into the world of trade marks, both before and after registration*.
*The following comments are geared towards Aussie business and brand owners in particular but are still relevant for consideration regardless of where you currently work and play.
GET RID OF THE BOX. When you have spent the last six months (or even years), and drunken god knows how many cups of coffee to find that perfect brand name that captures the very essence of your biz, it’s hard to not get emotionally invested in it. By all means, choose a name that may tug at your heartstrings or tickle your funny bone, but keep in mind the practicalities – all your creative efforts will be wasted if you can’t use or register a name.When creating and selecting a name, avoid using generic terms that are used to describe your product/services or words that are commonly used in your industry. Steer clear of any names that look and sound similar to an existing brand (incorporating an existing trademark into your name is a serious no no). Some might say think outside the box… I say throw the box away! It pays to be inventive and creative with your brand, not only will it assist your chances of attaining trade mark registration but also enforcing your rights against anyone that’s trying to ride on your coat tails. If you’re in need of inspiration, just check out some of the world’s most valuable brands – the majority of which originate from inventive words.
DO YOUR HOMEWORK. It’s important to note that Australia operates under a ‘first to use’ system; a party that first to use a trade mark has rights under common law and this prior use may trump any subsequent use or trade mark application for the name by another party. I’ve seen countless scenarios where people choose a name and then dive head first into registering their business or company and domain names, only to then find that they cannot use the name that they’ve got their hearts and minds set on because the name is already in use, or worse it’s subject of a registered trade mark. If the name is a registered trade mark, you’ll probably find yourself on the receiving end of a cease and desist letter from the disgruntled trade mark owner. The Australian Securities and Investments Commission (ASIC) will enable you to search for identical or similar business and company names while the Australian Trade Marks Online Search System (ATMOSS) will allow you to search for any Australian registered trade marks. Be sure to check the availability of domain names and social media handles too, and with the existence of Google, there’s really no excuse not to do your homework. If all else fails, hit up your friendly local trademark attorney to lend you a helping hand with searching services and advice. We love homework.
OWNING IT. So you’ve done all your homework and settled on a name (yay!), now it’s all systems go to register the trade mark, right? Not quite… a little more patience please grasshoppers. You should give some serious thought to who owns the trade mark before applying for registration. A trade mark is an asset and a pretty valuable one at that. So it’s important to ensure the correct party is entitled to ownership of the trade mark before filing. A stuff up of the ownership details cannot be amended after filing an application and can adversely affect your rights down the track. The trade mark may need to be registered under your name and owned as a personal asset. Alternatively, it may need to be registered and owned by the company.Side note – trade marks cannot be registered in the name of trusts, business names, trading styles, unincorporated associations, clubs, partnerships or societies, as these entities don’t have a legal personality.
A CLASS ACT. It’s a common misconception that a trademark may be registered for anything and everything. Trade marks are registered in accordance with a classification system and there are 45 classes that categorise different products and services. If you’re looking for ‘blanket’ protection for your brand, you’ll be looking at registration across all 45 available classes. Not only will this come at a seriously steep price as each class attracts a fee, it’s also an unnecessary approach. Take the time to consider the types of products or services that you offer under your brand. This will help you determine the number of classes (and associated costs) that will provide coverage for your business. In addition to your immediate products and service offerings, it’s worth planning ahead and thinking about the types of products or services that your business will likely expand into.
DIFFERENT STROKES FOR DIFFERENT FOLKS.
Consider the different types of trade marks used within your business that may be worth registering. Often brand owners will only consider registration of their logo, which is totally understandable considering a lot of time, energy and money has gone into its creation but there are limitations with the registration of a logo alone. Where possible, consider registration of a wordmark. This provides the broadest scope of protection regardless of the font, size, colour, or stylisation of the word or words. In addition to the wordmark, you can also look to register logos, taglines and even sub-brand names. Registration of your brand in several different formats can provide a really effective protection strategy for your brand and business.
REGISTER, REGISTER, REGISTER.
Another common misconception is that a business, company or domain name registration will provide you with a Game Of Thrones-like wall of protection but business, company and domain names are simply administrative tools to allow you to conduct and operate your business. If you want ownership and exclusive rights, a trade mark registration is what you’re after. The registration process does take some time to complete here in Australia, up to 7.5 months at the earliest. I know that seems like eons in this day and age of instant gratification but the process can actually take even longer if you run into hurdles along the way. So again, do your homework and get advice before filing.
Trade mark registration can be a great bang for your buck when you consider that you obtain registration for a 10-year period. Towards the end of your decade of exclusivity, you can opt to renew your registration for another 10 years. You can do this indefinitely for the lifetime of your brand and business. And when you move house and have to update about a million different people about your change of address? I hate to add to the to-do list, but updating your details for your trade mark registration is a must. This is often something that is forgotten or overlooked, especially for brand owners who self-file and are self-represented. The consequence is that you may not receive important correspondence about your trade mark registration, such as renewal notices, and if you don’t renew, you could lose your trade mark rights and it may be too late to reinstate them. Also, if there have been any significant changes to ownership of the trade mark, it’s best to ensure these details are also updated to help maintain the validity of the trade mark.
USE IT OR LOSE IT. Registration does provide you with exclusive rights to use your brand name but the key word here is use. If you don’t actually use your trade mark in the course of trade, your registration and rights will become a sitting duck. A competitor or another interested party can challenge the validity of your registration and seek to have your mark removed if you have not used your mark for a period of time. To prevent it from becoming open season on your trade mark rights, make sure you use your trade marks.Bonus side note– You can use and display the ® symbol alongside your registered trade mark. Prior to registration, you can opt to use the ™ symbol next to your trademark.
There’s no unicorn for global protection for trade marks. If you’ve registered here in Australia, it won’t prevent someone else from using the same or similar brand in the good ol’ US of A. If you have plans for your business to step up onto the world stage, you’ll need to think about your commercial and export markets, and register your trade mark in those countries of interest. There are economic ways to obtain protection overseas, particularly if you have an existing Australian trade mark registration. Again, your local trademark attorney will be able to take you on a guided tour of the international registration options and strategies that will suit your needs.
NEIGHBOURHOOD WATCH. I’m not suggesting you pull a creepy Hitchcock Rear Window effort and sit there spying on people with a telescopic lens but you should be diligent out in the marketplace. Trade mark rights can act as a deterrent in the first instance but they are not an automatic defence mechanism; it’s your responsibility to enforce your rights. Develop a strategy to monitor how your trade mark is being used, your competitor’s activities, any alleged infringement activities and what other trade marks are being filed. You’ll find various watching search services available through your IP professional, so you can get on with your business.
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