Trade mark your brand
Trade marks are valuable marketing tools. Your business’s trade marks (i.e. its branding) are how you identify yourself and how customers recognise you in the marketplace. The more your business grows, the more valuable your trade marks become.
Read on to learn why registering your trade marks is the best way to protect your business’s branding and identity.
To learn more about the trade mark application process, check out our trade mark application guide or download our trade mark flowchart below:
Trade mark basics
A trade mark is any sign that helps customers identify which company a product or service comes from. For example, your business name, the logos on your website and social media platforms, and even your packaging can function as trade marks.
Consider Nike’s iconic swoosh. One glimpse and you know exactly which company those runners come from, and maybe even what it be might be like to wear them.
A well-protected trade mark can quickly communicate to consumers a company’s reputation, products and services.
The outcome can depend on a range of factors, including:
- how similar the two trade marks are
- who used the trade mark first
- what goods and/or services the trade marks are used with
- the market reputation of each trade mark
- the likelihood that consumers will confuse the two trade marks
- whether the trade marks are registered.
Registering your trade mark offers such powerful advantages and brand protection that it is difficult to justify NOT registering your trade mark. Some advantages include:
- You get exclusive monopoly rights over your trade mark, meaning no one else can use it with similar goods and/or services.
- Pursuing another party for trade mark infringement is far more straightforward and cost-effective if your trade mark is registered.
- A registered trade mark is regarded as a business asset which can be licensed, sold and transferred. A registered trade mark can be easier to assign a dollar value to and transact with as compared with an unregistered trade mark.
- A registered trade mark protects you from copycats across an entire country, whereas an unregistered trade mark is typically limited to the specific geographic area it has been used.
- You can provide your trade mark number to marketplaces like Amazon, Facebook and Alibaba – these marketplaces act in favour of the trade mark rights holder in order to take down counterfeiters.
- A registered trade mark in one country can form the basis of your trade marks in other countries.
Trade marks are usually words (NIKE), logos (the Nike swoosh) and slogans (Just Do It).
However, anything that helps customers identify your business and brand can be protected as a registered trade mark. For example, some other trade marks you’ll recognise include:
- CADBURY’S purple colour (a colour trade mark)
- the WINDOWS login sound (a sound trade mark)
- the triangular packaging of TOBLERONE chocolate (a shape trade mark)
Choosing your trade mark
When a business registers a trade mark, others can’t use that trade mark without their permission in relation to certain goods and services. This is a powerful legal right so it must be ensured that businesses don’t have exclusive rights to words and phrases that the general public might use in the ordinary course of trade. As such, only trade marks which are distinctive of the associated goods and/or services can be registered.
As a general rule of thumb, the more descriptive a trade mark is, the less distinctive it is. Indeed, some of the strongest and most well-known trade marks are highly distinctive and have nothing to do with the goods and services they are used with. For example:
- WOOLWORTHS for grocery stores
- APPLE for computers
- IKEA for furniture
- QANTAS for aviation-based goods and services
- TIMTAM for biscuits
- PENGUIN for books and publishing
A distinctive trade mark also helps your customers find your business because it allows you to distinguish yourself from competitors. This is even more crucial if you have an online presence. A good way to check if your trade mark is distinctive is to search for it online. If there are many related results which you’ll need to compete with, your trade mark might not be very distinctive.
Before using your trade mark, you should check that it is actually free for you to use. If another business has already registered the trade mark, your use of their trade mark, or something similar to it, can result in trade mark infringement.
The worst-case scenario is when a business commits to their branding without doing any trade mark searching, and some months or years into trading they receive a cease and desist letter from the trade mark owner. It’s only at this point that the business might seek trade mark advice, but by this point there’s often very little they can do besides rebrand.
No one enjoys being forced to rebrand, and it’s especially painful if you’ve already grown your business and developed a reputation and following. So before you commit to your trade mark, engage an attorney to conduct a thorough trade mark clearance search to ensure your trade mark is free to use – it can save you a lot of heartache and costs later on.
The Australian Trade Marks Office provides an online trade marks database where you can check if your trade mark is available to register and use in Australia.
There is also an international trade mark database where you can check the availability of your trade mark in other countries.
That said, even if your precise trade mark is not registered, if it is substantially identical or deceptively similar to a registered trade mark, use of your trade mark could still amount to trade mark infringement. This is why it is advisable to have a specialist trade marks attorney perform and advise on your trade mark search.
Trade mark rights are territorial. If you have only registered your trade mark in Australia, then your trade mark rights only protect you in Australia. If you wish to use your trade mark overseas, check that it is free to use in each country of interest and protect your trade marks there too.
Registering your trade mark overseas is especially important in jurisdictions like China, where the frowned-upon practice of trade mark squatting has been a costly issue for many businesses entering the Chinese market.
Common trade mark mistakes
Business names and company names are registered with the Australian Securities and Investments Commission (ASIC). These name registrations are required to run a business in Australia, but they do not stop others from using those names (or similar names) the way a registered trade mark can.
Additionally, if someone has already registered a name as a trade mark, your use of that name (or something similar) could infringe their trade mark, even if you have registered the business or company name.
Domain names are registered by the .au Domain Administration and allows you to secure the web URL only. It does not stop others from using the name (or a similar name) the way a registered trade mark can.
If a third party has already registered the name of your domain as a trade mark, your use of the domain name could infringe their registered trade mark.
As such, a good branding and trade mark strategy is to ensure that the name you adopt will be free as a business name, company name, domain name and trade mark.
You must use your registered trade mark as a trade mark:
- in the course of trade;
- in each country where it is registered; and
- across the range of goods/services it is registered in respect of.
Otherwise, your trade mark can be removed or limited in scope. This is to discourage businesses from squatting on trade marks that will never be used.
Third parties can apply to remove your trade mark for non-use. Similarly, if you wish to register a trade mark but it has been blocked by an unused trade mark, we can help you apply to have it removed.
Many Australian businesses are targeted by unofficial third party organisations claiming to be involved in the trade mark process and issuing large invoices.
The invoices often look legitimate and many businesses have fallen victim to paying significant fees. If you receive an invoice, particularly from a source you are not familiar with, please disregard it or bring it to the attention of your trade marks attorney.
More information about how to protect yourself can be found here.