Choosing your Trade Mark

7  September, 2015
Posted by Sean Mullins. 

CHOOSING YOUR TRADE MARK

Choosing a name for your business, can be a daunting task. It’s important your name not only stands out from the crowd but can be registered as a trade mark.  Registering your business name as a trade mark, will give you exclusive rights to use your name for your nominated goods and/or services.

Finding a name that can be protected by trade mark registration is not always straight forward however.

We’ve put together some handy tips to get you started when choosing a trade mark below.  These tips are for Australian businesses only.

DISTINCTIVENESS

The first step to choosing a trade mark is ensuring that it is distinctive. This is important for two reasons:

  1. The more distinctive, the more likely you are to stand out from other traders and not get confused with existing businesses; and
  2. You can only obtain trade mark registration (allowing you to prevent other traders from using your name) if you trade mark is sufficiently distinctive.

So, what does it mean to be distinctive?

With regard to trade marks, your brand will be distinctive so long as it does not substantially describe the goods or services you are providing (i.e. ‘Red Apples’ for apples) or it is not a word or phrase that is likely to be used by other traders in the everyday course of trade.

Take for example “PEPPER STUDIO MELBOURNE” in relation to graphic design services. In this instance, the distinctive word is “PEPPER” as it has no relation to design services. Whereas STUDIO is likely to be viewed as an indicator of the type of venue the services are provided from and MELBOURNE is purely a geographical indicator.
In essence, descriptive words have very little impact as they do not provide any distinction or differentiation between your trade mark and other traders. Essentially, for the purposes of trade mark registration, “PEPPER STUDIO MELBOURNE” is the same as simply “PEPPER”.

Further examples of words that can generally not be trade marked are as follows:

– surnames (i.e. Smith’s Bakery)

– geographical names (Melbourne Dance Club)

– trade marks that refer to a time frame (i.e. ready in one hour)

– names that emphasis the worth of a product (i.e. worth their weight in gold)

– names that describe the function of goods or services (i.e. the Excellent Vinyl Shop)

Another way your can add distinctiveness to your branding is by creating a logo that has prominent elements that stand out from the words alone – i.e. something that is more than just a stylisation of the words in a particular font.

DO YOUR RESEARCH!

Marketplace searches

The most obvious starting place when choosing a business name is to get online and search for the your chosen name to see if someone is already using it in relation to goods or services that are similar to yours. Further, it can be a good idea to check if any individual words within your name are being used a lot within that industry. The more often the term comes up, the more likely your name is going to be descriptive and/or get lost in the confusion with other traders.

It is good to check not just traders in Australia, but also internationally if you expect to expand you business overseas at some point, or provide services online.

Trade Mark searches

In addition to market place searches, a lawyer can undertake searches of the trade mark database, ATMOSS, to ascertain whether someone has already applied for or obtained registration over a similar name in relation to similar goods or services. Whilst these searches cannot definitively say that no one else is using the trade mark in the marketplace, they are a good indicator of your potential to obtain trade mark registration.

It is always best to do these comprehensive searches BEFORE you start trading. Once you begin trading, the costs of changing your name should something come up, or defending a trade mark infringement action can be often incredibly expensive.

If you are in the process of choosing a business name, contact Studio Legal for a complimentary trade mark search and advice regarding the registration of your name or logo as a trade mark.