Protect Your Brand via Trade Mark Registration

 

3 April 2017
Posted by Tony Grujovski and Matt Hughes (Studio Legal intern)

 

Are you a business owner with a great brand?

A lot of business owners forget to protect their brand through trade mark registration.  Business owners commonly think that registering a business name is enough to stop others from using their brand.   But this is wrong and forgetting to register a trade mark can have catastrophic consequences.

It’s time to get the facts on trade mark registration and why it is absolutely necessary.

What is a trade mark?

A registered “trade mark” offers legal protection for the goodwill and reputation of your brand. It helps consumers identify your business and differentiates your products or services from those offered by your competitors.

A trade mark commonly consists of words, logos or pictures, or any combination of these. A trade mark can also be a slogan, number, sound, smell, shape, or aspect of packaging.

Trade marks are capable of being registered with the Australian government. This registration provides its owner with an enforceable right to prevent other traders from using the trade mark, or one which is similar, in Australia.

Why register a trade mark?

A trade mark is an extremely valuable business asset – it is the fruit of the hard-earned goodwill you have accumulated in your business. If your business does not have the legal authority to stop others from using your branding, name or likeness (or something confusingly similar), then the value of that goodwill is in jeopardy. When it comes time for you to sell your business, what do you have to sell of value if the goodwill in your branding is not protected and monopolised?

A government-granted trade mark registration is the only way to obtain protection over the use of your brand in Australia. Once registered, ownership of a trademark confers an exclusive right on the owner to use and exploit the trade mark for commercial gain. Business name, ABN or domain name registrations do not provide any sort of intellectual property rights or protection to the owner. If you’re business and domain name are registered but your trade mark is not – you are potentially leaving yourself exposed to competitors profiting from your business’ goodwill.

What can I protect as a trade mark?  

The best type of trade mark is one which clearly distinguishes your business from other traders. Not all words, logos and images are capable of government-granted protection – they must be capable of identifying a specific business.

For example, “Chapel Street Florist” as branding for a florist located on the street of the same name would not be capable of trade mark protection because it describes the location of a florist business. Whereas “Say It With Flowers” would be capable of being afforded protection as it clearly identifies a specific florist.

This is why selecting a brand which is capable of trade mark protection for a business at the inception stage is so important – uniqueness is key with trade marks!

How do I obtain a registered trade mark in Australia?

IP Australia is the government body which administers trade mark rights in Australia.

The first step to securing trade mark protection is to file a trade mark application with IP Australia.

As part of the application, the goods and services in which protection is sought must be specified.

IP Australia will then examine a trade mark application to determine the following:

(a) The brand can sufficiently function as a trade mark (ie. the brand is not descriptive).

(b) The brand is not identical or similar to an existing trade mark registration.

If there are no issues raised, the application is accepted and advertised as such on a public register. Then, provided that no third party oppositions to your application are filed (this is rare), your application is automatically registered and your trade mark protection kicks in.

How much does trade mark registration cost?

We can assist with the filing and management of trade mark applications for your business. If you are interested in seeking trade mark protection, we will prepare a proposal tailored to your brand, outlining appropriate classes of goods and services to be covered in your application depending on the nature of your business.

As part of our proposal, we provide a complimentary search of the Australian trade marks register to determine if your brand has already been applied for or registered.

If you are interested in seeking trade mark protection for your brand or have any questions about trade marks and the registration process, please contact us on (03) 9521 2128 or email trademarks@studiolegal.com.au. We’d love to work with you!

DISCLAIMER

The information in this article is of a general nature. It does not constitute formal legal advice, and should not be relied on as such. Please see the full disclaimer in our website terms. Please contact Studio Legal if you are seeking advice about a specific legal matter.