It's an exciting time! You have a new product to release, or a new business to launch. The concept is amazing, you know are happy with the tentative design of the logo you had created. You have secured the domain name and possibly even the business name. You are ready to launch …but at this point its important to understand, you still do not own the intellectual property in your brand name.
When you think about it, your business name or your brand of products is perhaps the most valuable asset of your business. It only makes sense, right, to ensure you own that valuable Intellectual Property.
Often times, however, it is not until after launching the business and getting some revenue that a business owner decides to turn their attention towards protecting their brand.
So you reach out to a commercial law firm that does a lot of Trade Mark work – and we suggest that law firm be IP Partnership – and you ask them to apply for a Trade Mark. However the trademarking lawyers write to you and tell you something you were not expecting.
…Your brand that you are trying to protect by Trade Mark registration is one of two thigs:
- It’s not going to achieve registered Trade Mark protection because there is already a prior registered Trade Mark in the same class or closely related class; or
- The Trade Mark is not going to achieve registered Trade Mark protection because the Trade Mark is too descriptive.
IP Australia, who handle Trade Mark applications in Australia have become increasingly strict about what they allow on the register. We have found that Trade Marks that would otherwise have achieved protection 10 years ago, are now being refused by IP Australia due to the above reasons.
There are ways to overcome IP Australia’s issues, however the most simple way to ensure your brand or business name is capable of registered Trade Mark protection is to ensure you create a name, icon or logo that is:
- New (not used by any other trader in a similar industry); and
- Is not descriptive.
For example, if you are launching a business that does coffee from a mobile van, think twice before calling the business ‘The Coffee Van’. In a world where a businesses online presence is key, we understand that names such as ‘The Coffee Van’ may assist with SEO and google search results, however that name is descriptive and accordingly will not be afforded registered Trade Mark protection (without substantial evidence being supplied to IP Australia that the name has become known by the Australian public as being associated with your business).
It is also important to engage expert Trademark lawyers to ensure that your name is not already owned by another business, somewhere else in Australia. IP Partnership can carry out a comprehensive Trade Mark search report to ensure that your proposed name is not only not a prior registered Trade Mark, but is also not showing up on social media or online as being used by a competitor. If a competitor is using the name before you, they will have grounds to oppose your Trade Mark application based on prior use.
As a law firm that assists many clients with Australian trademark registration and International trademark registration, it can be frustrating for some clients who spend time and resources into developing a brand, only to discover they may not be able to own that brand as a registered Trade Mark.
If you own a registered Trade Mark it is a breach of the Trade Mark Act to use a name, slogan, symbol or icon that is substantially identical to or deceptively similar to your registered Trade Mark. A competitor who may attempt to ride off your good will, if you are the owner of a registered Trade Mark, is liable to pay you for any profit they earned using your brand, in addition to you having the right to seek an injunction from stopping them using a name similar to your registered Trade Mark. If you require assistance with trademark infringement it is important to contact trademarking lawyers with experience.
If you have any queries about Trade Mark registrations in Australia or internationally or if you require a trade mark lawyer to send a cease and desist letter or respond to a cease and desist letter please, or register Trademark Australia. Do not hesitate to contact the experts at IP Partnership. We are trademark lawyers Gold Coast, however we assist Clients located all over Australia and Internationally to apply for a Trademark.
