When deciding on a new business brand, there are a range of important considerations.
The right to use that new brand from a trade mark perspective is one element, and certainly one of the most important.
But there’s a range of other issues that also need to be considered.
1. Domain names
Is a suitable domain name available for registration? In Australia that would normally be a .com.au domain name.
But what if someone accidentally types in the corresponding .com domain name instead of the .com.au? What will they find? Will it be immediately apparent that they have stumbled across the wrong website? Or will they be looking at a similar kind of business in another country that they might mistake for yours and potentially contacting them by mistake?
What if somebody searches for a shortened form of the domain name? Such as if it is XYZServices.com.au and somebody goes to XYZ.com.au? Or your brand involves a misspelling of a dictionary word and somebody uses the correct spelling instead? Or US vs English/Australian spelling of dictionary words (eg center vs centre)?
2. Business and company names
If the new brand will be the main brand for the business, is the corresponding business name or company available for registration?
Unlike trade marks, which take into account how the brand will be used, business names and company names are usage-agnostic. This means that a quite unrelated business, or even a non-trading company, can make the desired name unavailable.
The availability of an appropriate company name is particularly relevant because section 153 of the Corporations Act 2001 requires the company name to appear on all public documents.
3. What if somebody Googles you?
One of our colleagues recently had her interest piqued by a new local Vietnamese restaurant. She wanted to find a menu online. Unfortunately the second hit on a Google search was for an adult services provider with the same name.
That might not be a problem from a legal perspective. But on the flipside it is also not necessarily the image that the business wants to portray to people who look for it.
4. Going international
If the brand is going to be used outside Australia, what does it mean in the local language? Even if it is not going to be used outside Australia, what does it mean in the most commonly-used foreign languages in Australia?
If the trade mark is going to be used in a Chinese language market, what might a Chinese language equivalent look like?
It is usually important for the Chinese language version to have a similar sound to the western version, and also to have a suitable meaning.
Western companies have at times struggled to hit the mark with Chinese language versions of their brands. If exporting to China or Taiwan is going to be important then this should be considered early on.