Amid the stories of gloom and doom that have pervaded much of the mainstream press in recent times, the Australian Financial Review published an article earlier in the year which cited comments by a number of marketing experts that a downturn actually presents opportunities for brand owners to strengthen the commercial value of their brands1.

With those comments in mind, we have set out below some ways businesses can prepare to position themselves to be ahead of their competitors from a brand protection perspective when the economic climate improves.

Tips for brand owners

  • Register early: First, if you develop a new trading name, logo, product name or other trade mark, look to apply for trade mark registration as early as possible. Even if you don't intend to use the relevant trade mark immediately, you will generally have a period of up to five years from the date of filing to commence using the mark (provided you intended to use the mark in good faith at the time of filing).
  • Think about brand extension: When filing trade mark applications, look to obtain protection not only in respect of the products and services you currently use the brand for, but also the products and services you intend to use the brand for in the future. This can assist in preventing others from obtaining trade mark rights in respect of products or services you may wish to extend your brand into in the future.
  • Have searches done: Developing and promoting a new brand can be a very significant financial investment. Accordingly, before investing significant amounts of money in a new brand, it is recommended to have professional searches done to:
  • assess whether the brand may infringe already existing trade marks; and
  • confirm that the brand is in fact available for trade mark registration.

Carrying out these preliminary searches could ultimately be a significant cost-saving exercise, particularly if any trade mark infringement or similar issues arise.  

  • Be vigilant: A trade mark owner's exclusive rights can be significantly diluted if another business makes concurrent use of a similar mark or obtains trade mark registration of a similar mark. As a consequence, it is important to:
  • monitor any use of similar trade marks; and
  • where appropriate, take enforcement action as soon as possible.
  • Expand your domains: In our experience, it is quite common for disputes to arise regarding the registration and use of domain names.

Domain name registration is largely still a 'first in, best served' process. Although action can be taken against cyber squatters and others who register domain names in bad faith, these proceedings can be costly and time consuming. Consequently, it is important to:

  • consider whether registration of an appropriate portfolio of domain names in respect of trading names, product names and other brands has been obtained; and
  • be aware of new types of domain names which become available (such as the recently launched .aisa and .mobi domain names) and consider whether to apply for registration.  

Don't miss your chance!

The current economic climate presents valuable opportunities for business owners from a brand protection perspective. While competitors' attention is focussed elsewhere, savvy brand owners can take steps to consolidate legal rights in a new brand or improve the protection of an existing portfolio.