Imagine this: you have this great idea for a business and you’ve even got the perfect name for it. You then spend money designing a logo and spend even more money on printing and using your mark on everything from business cards to your website. A few months down the road, you receive a letter of demand informing you that you’re infringing someone else’s trade mark.
Second scenario: you’ve still got the great idea and the equally great name, and you’ve again invested in the design and promotion of your brand. Sometime in the future, you discover a competitor is using a similar brand to yours and, without a registered trade mark, your ability to enforce your legal rights against the competitor comes with a high price tag and your chance of success is far less certain. To make things worse, you also realise that due to the nature of your brand, it will be expensive and difficult to register your trade mark.
That ‘perfect’ name has certainly lost its luster.
It can seem daunting for a business, particularly in its infancy, to anticipate potential future risks and take action before any problems have occurred. However, when it comes to protecting your business’ IP rights, it is often beneficial to be proactive early on to avoid cost blowouts in the future.
We explore some general steps below, which will hopefully reduce the possibility of finding yourself in situations similar to the above scenarios.
So, let’s rewind and start from the beginning. You’ve got the great idea, now what?
Before you lock in your brand, consider the following:
1. Avoid common English words that describe your business’ goods or services
For example, the trade mark SUPER SLICES for cheese and cheese products.
2. Geographical names are difficult and more costly to register as a trade mark
This includes Australian geographical names, as well as well-known geographical locations outside of Australia.
You can conduct a geographical indication search to see if your brand is the same or similar to a geographical location.
3. Common surnames in Australia are difficult and more costly to register as a trade mark
You should avoid brands consisting of ‘common surnames’. You can conduct an Australian surname search to assess whether your brand is a common surname. Common surnames are those that appear more than 750 times on the electoral roll.
4. Single letter or two letter marks are difficult and more costly to register as a trade mark
You will require compelling evidence to be filed in order to convince the Trade Marks Office that these types of marks should be registered, particularly if the single or two letter marks correspond to the goods or services in issue.
5. Consider developing a logo rather than a word mark
A logo mark with a distinctive device element may overcome the issues associated with the above types of marks, provided there are no similar logos already in the marketplace or on the Trade Marks Register.
6. Conduct marketplace searches to see if someone else is already using the same or similar brand for the similar goods or services
These searches include Internet, business name and domain name searches. There are also specialist databases that you may wish to search if your business is in a particular sector e.g. the fashion or pharmaceutical industries.
7. Search the Australian Trade Marks Register to see if someone else has applied for the same or similar trade mark for similar goods or services
The Australian Trade Marks Register is publicly searchable, so it would be wise to at least look for ‘direct’ blocks for similar marks owned by other parties that are already on the Register.
The above is intended to be a general guide to help you develop a distinctive brand. If you are unsure on how to conduct the searches or require specific advice on developing, protecting and getting the most out of your business’ IP, speak to an IP professional who will be able assist you through the various facets of IP.
A distinctive and unique brand will be easier and less expensive to register as a trade mark, less likely to conflict with other brands in the market, and easier to enforce against third party infringers. Further, from a commercial perspective, a distinctive brand is more memorable to consumers.
Okay, so now you have your trade mark, what’s next?
8. Consider registering your trade mark
There are a number of benefits of a trade mark registration. One benefit is it is usually easier and less expensive to enforce your rights against third parties. Without a registered trade mark, it will be more expensive to enforce your rights based on the reputation of your mark.
Once you have a registered trade mark, you can lodge a Trade Mark Notice of Objection with Australian Customs. Customs will then seize any infringing counterfeit products imported into Australia.
You should consider registering your trade mark in the countries where your business is retailing or manufacturing the goods. It is especially important to register your trade mark as early as possible in countries where it is ‘first to file’, to avoid a third party ‘squatter’ from acquiring your brand and then suing you for infringing ‘their’ mark!
9. Collect evidence of use of your trade mark
It is always good practice to keep records of any evidence of your business’ use of the trade mark before and after registration of your mark e.g. advertising, social media campaigns, business stationery, signage etc. This could assist in the registration process, and may also protect your mark from a non-use action in the future.
10. Ensure your business is using the trade mark correctly
After your trade mark has been registered, ensure your business is using the trade mark for all goods or services protected by the registration. If your business is not using the mark for all goods or services claimed over a certain period, other parties may be able to apply to remove your mark from the register for partial non-use.
11. Conduct regular trade mark audits
A trade mark audit includes:
- identifying new trade marks your business has developed or is using;
- keeping track of any assignments or license arrangements that may affect your trade mark rights; and
- identifying ‘gaps’ in your trade mark portfolio, such as non-use of your existing registered trade marks, lack of protection in territories of interest (particularly in countries which do not recognise common law trade marks established through use), or your existing registered trade marks do not cover all of the relevant goods or services that the trade marks are used for.
Consider conducting regular trade mark audits as it will help reduce legal problems and expenses down the road.
Your business’ IP is valuable and is worth protecting. Selecting a brand that is distinctive, memorable and unique in the marketplace now will avoid unnecessary expenditure and issues in the future.