What’s in a name? Protecting your brand
Business name
It can be particularly disappointing for clients to discover that having a business name and company name does not protect them from a competitor setting up a business with a very similar name. In situations such as this it may be too late to obtain a trade mark to protect your business from that competitor. In order to reduce the risk of disappointment it is advisable to apply for a registered trademark as soon as possible to help prevent other companies from using the same name.
To see if your brand is the same or similar as another business name or company name, a search can be made on the website of Australia Securities & Investments Commission (ASIC) at National Names Index.
Registered trademark
Having a registered trademark in Australia will give you the legal rights to initiate trademark infringement proceedings if someone else is using your name or other protected elements for which you have exclusivity.
As the owner of a registered trade mark you have the exclusive right in Australia to control the use of your trade mark by identifying and promoting the goods and services for which it is registered only. You can authorise or licence someone else to use it or you can take action against someone who copies your trade mark. You can also apply to the Australian Customs Service to prevent importation of goods which would infringe your trade mark. Once you have successfully registered your trade mark, it is your responsibility to protect it from infringement or removal.
By registering your trademark in Australia, you will get greater legal protection for your organisation’s name, logo, and any other trademark that you think needs protection. Place the ® symbol or the ™ symbol next to your trade mark whenever it is used.
Timing
Trade mark registration is not an immediate process in the way that registering a domain name or business name is. Once the application is filed, there is a waiting period for approval, followed by another waiting period for government registration. A minimum of 7.5 months is the norm for all trade marks from initial application to successfully obtaining the trademark.
Searches of relevant databases should be carried out to check for existing registered and pending trade marks. It is also prudent to investigate any use of unregistered trade marks to ensure the proposed trade mark does not infringe on another party's existing trade mark.
Trade marks are administered on a “first to file” basis, so the sooner you register the better. Provided your trade mark is in active use, your registration may continue indefinitely as long as you renew it every ten years.
Generic use
You must try to ensure that your trademark continues to be treated as a trademark. If your trade mark becomes known as the generic name for your goods or services and ceases to be recognised as a trade mark, a party may apply directly to a court for a court order to remove or cancel your trade mark registration. Many words have started out as trademarks and passed into common language, such as items that we use every day, like zippers and escalators; and words associated with familiar products like the jet ski.
If a registered trade mark is unused for a certain period it can be removed from the Register by applying to the government IP agency, meaning that you could lose your right to that trade mark. A person can apply to have your trade mark removed from the Register if you have not used your trade mark for a period of three years, or if you have not used your trade mark and you had no intention of using the trade mark when the application was filed. The person applying for removal is often a trade mark applicant whose registration is being prevented by your registered trade mark.
Scope
Trading over the internet involves entering a global marketplace. It is not possible to register a “world trade mark”. Registration of a trade mark in Australia does not give you any rights in relation to that trade mark overseas. If your business offers goods or services for sale on the internet, you could face a claim for infringement in a country where someone else owns that trade mark. If you already do (or are considering) trade over the internet, you should consider applying for international trade marks.
Costs
The costs associated with registering a trademark depends on the number of classes that you wish to register the trademark in. There are 45 possible classes of goods and services. In order to decide what goods or services to list, you give some thought to the following:
What is the nature of your business?
What are you known for by your customers/clients?
What products or services does your business provide?
The extent of your products or services as well as the desired level of protection ultimately determines the final cost, but in general the registration process is affordable - even for start-up businesses.
What next
In order to protect your valuable intellectual property, you will need to lodge a successful application, monitor and protect your trade mark, and ensure that you use the trade mark commercially. Contact You Legal for confidential legal assistance with trademark registration and brand protection.
* This blog is for general guidance only. Legal advice should be sought before taking action in relation to any specific issues.