By Dhanu Eliezer
Branding is a significant part of establishing and growing a business. In fact, business names or logos can become a business’s most valuable asset. When given the proper consideration, selecting a brand name and registering it as a trade mark can help you protect your business and provide you with further opportunities to expand your business.
Too often, unfortunately, trade marks are not at the forefront of a business owner’s mind. Founders are preoccupied with the costs to set up and run their business so that they neglect to protect their intellectual property.
Although not a requirement for operating a business, registering a trade mark is an important safety measure that makes enforcement less costly. Early registration also mitigates the risk of another party trying to claim their own right to your trade mark.
We believe that more business owners would save themselves trouble and money if they understood the initial steps they should take before launching their business. Below, we look at the common mistakes entrepreneurs make when thinking about their brand and trade mark registration.
1. Choosing a Business Name That is Too Descriptive
One of the most important decisions a business owner makes is choosing their business name. Selecting a distinctive name is advantageous for two reasons:
a. it sets your business apart from other traders, and
b. it makes your name more likely be registered as a trade mark.
The Trade Marks Act 1995 (the Act) requires that a trade mark is distinctive and capable of distinguishing its goods and services from that of other traders. A business name like Surry Hills Hair and Beauty would be too descriptive since it tells consumers exactly what the business does – hair and beauty in Surry Hills.
Your name can still convey the nature of your business, but be creative! An effective way to create a distinctive trade mark is through made up words, phrases or puns. We have more tips for choosing a distinctive trade mark in our article, ‘7 Tips When Choosing a Trade Mark’.
If your trade mark is not distinctive, it may also be difficult to enforce. For example, IP Australia would consider it unfair to stop another hairdresser from using the words ‘Surry Hills Hair and Beauty’ since it is likely that many beauty salons would need to use that phrase (or similar) to describe their services.
2. Not Checking the Trade Marks Register
A common misconception is that the Australian Business Register and the Trade Marks Register are the same register or at least reflect the same registrations. This is not the case. A business owner may register their name as an Australian business name but not as a trade mark, and vice versa.
If a name is available on the Australian Business Register, you should also check the Trade Marks Register. In fact, business owners should view the trade marks register a priority since it is a registered trade mark that gives the owner an exclusive right to use the name (and the power to stop someone else from using it). In contrast, a registered business name does not give the owner a right to stop others from using the same name in relation to their business.
3. Checking the Trade Marks Register Only
Savvy business owners check the trade marks register to see whether a mark is available. This is certainly a good place to start, but don’t let your search stop here. Although registered trade marks receive greater protection, Australian common law also recognises unregistered trade marks and brand reputations.
You should then also search sites like Facebook, Twitter, LinkedIn and YellowPages. Even basic Google searches will help you identify if any businesses are using similar names or logos in your area. Those businesses may not have registered a trade mark, but they may still hinder your own registration process.
4. Not Checking Whether the Business Name or Domain Name Were Available
Ideally, a business could register the trade mark, the business name and the domain name. As already explained, registering on does not give you an automatic right to the other.
Check the availability of all three early and register as soon as possible before someone else takes the name you want. If someone registers your domain name, it can be quite costly for you to buy it from them.
5. Believing a Trade Mark Gives Exclusive Rights For All Goods and Services Worldwide
Another common misconception is that a trade mark gives the owner the right to use the mark exclusively without any limitations. Under the Act, the registered trade mark gives the owner the right to use the mark exclusively in relation to the goods or services under which they are registered, and the right extends to Australia only.
You will not be able to enforce your trade mark rights against a business that is operating in an industry that is vastly different to your own. Trade mark registration is a matter of national jurisdiction. So, you will need to file an application in the country you want protection.
6. Not Maintaining Your Trade Mark
Once your trade mark is registered, you must let others know that it is registered by using the ® sign next to the mark. In Australia, this is the symbol of a registered trade mark.
You must also use the trade mark in relation to the goods and services that you’ve registered your mark under. If you don’t do this, IP Australia could remove your trade mark from the register for not using the mark.
Remember that trade marks enjoy a registration period of 10 years. Every ten years you will need to pay a renewal fee to keep the registration. IP Australia uses the ‘Address for Service’ that you provide at the time of registration to send you reminders for renewal fees, so make sure this address is up to date.
7. Not Monitoring Your Trade Mark
Finally, trade mark owners often think that once their trade mark is registered, they can sit back and relax. But business owners need to keep an eye out for other businesses who may be using similar names or logos. If you are concerned that someone is infringing your trade mark, you should speak with an IP lawyer.
Establish your trade mark and brand strategy early. Consider your business’ long term goals and objectives when brainstorming business names. It is worth spending the money early to protect your trade mark, business name and domain name to minimize the costs of defending any issues in the future.