Considerations Before Registering a Trade Mark
Angus
When running a business, you may have some valuable assets that you would like to protect. On top of physical belongings that you must secure, you may also have intangible assets that require protection through a trade mark. Before filing a trade mark application, it is important to understand the entire process and how protection will practically apply to your business. Otherwise, you run the risk of making mistakes and wasting costs for unnecessary applications. This article will explore some key considerations about the process of registering a trade mark.
1. How Does a Trade Mark Work?
A trade mark is a form of intellectual property that provides legal protection over different elements of your business. You can trade mark a range of aspects, like:
- your business name;
- your business logo;
- a slogan;
- brand colours;
- designs; or
- a combination of these.
Importantly, your registered trade mark gives you the exclusive right to use, sell or licence it. If anyone were to use your trade mark without your permission, you have the right to make them stop. Accordingly, a trade mark is a valuable form of intellectual property that can assist in building and strengthening your business and brand image.
However, a registered trade mark does not give you exclusive rights in all cases. To understand how trade marks work, they only provide protection for a specific selection of classes. Practically, two similar trade marks can coexist if they belong to varying classes, like a trade mark in cosmetics and firearms.
Trade mark classes refer to a system of separating and classifying different trade marks, according to the description of the goods or services to which the trade marks apply.
When applying for a trade mark, you must choose which products and services are relevant to your business. Indeed, your registered trade mark may not be entirely effective if you forget to include important classes in your application. Before filing the application, we recommend making a strategy that describes exactly what you want to accomplish with the mark.
2. What Shape Should My Trade Mark Take?
Another important consideration is the shape of your trade mark. Specifically, you need to look at your business and ask yourself, ‘What requires protection?’
A registered trade mark over your business name is a good place to start. However, consider if you want a trade mark over a word or phrase, or if it will incorporate a logo. Likewise, will you identify your business via an image or perhaps a sound? While the latter sounds obscure, if you build a large enough reputation and use a specific jingle or tune as part of your advertising, you may want to protect this.
When considering the shape of your trade mark, you may need to file numerous applications. Ultimately, it is best to engage a trade mark lawyer so they can give tailored advice to your specific business.
3. Who Will Own the Trademark?
In recent years, Australian courts have been increasingly strict on the question of trade mark ownership. As a result, it is critical to double-check that you or your company owns the trade mark at the time you file an application to register it.
Importantly, listing the wrong owner in your application might have significant repercussions, including the inability to transfer the trade mark in the future. As such, make sure that the right person files, or is nominated on the trade mark application to avoid confusion in the future.
4. What Are Comparable Markings?
People frequently underestimate the need to search for comparable trade marks. After you have invested time and on a trademark, it can be aggravating to learn that someone else is already using (and has a registered trade mark) over something comparable in the market. It is one thing to have your application for registration rejected by IP Australia. It is an entirely different struggle when you find yourself in a trade mark dispute.
Accordingly, scanning the trade mark registry is a great place to start. Indeed, check everywhere for anything that looks like your mark. If a trade mark is identical to yours, though is not registered, do more research to see if it has been in continuous use. If that is the case, the other business may have some rights under their common law trade mark.
At the end of the day, you want your trade mark to be as unique and distinctive as possible. Not only for the sake of your brand image but to avoid disputes over misleading conduct. To complete a thorough trade mark search, a trade mark lawyer can assist you.
5. What Can I Not Trade Mark?
Keep in mind that some words, phrases, and symbols are not eligible for trade mark registration. For example, you will find difficulty applying for a trade mark over:
- common texts or images;
- descriptive words;
- common names;
- geographical names; or
- prohibited texts or images.
6. Can I Trademark a Catchphrase or a Slogan?
Yes. You can certainly trademark a catchphrase if you can prove it is connected to your business. For example, Spirit of Australia, Qantas’ iconic catchphrase, is an excellent example.
Importantly, your catchphrase must have the sole purpose of identifying your business. The idea is that the tune has become well recognised among your consumer group, thus making it appropriate for trade mark protection.
Further, you may run into problems if your catchphrase has a purpose other than identification. In such cases, IP Australia may deny registration because the message is informative, social, political, religious, or similar. To put it another way, your catchphrase does not work as a uniquely identifying trade mark.
Key Takeaways
Before deciding whether to trade mark something for your business, you should consider:
- how a trade mark works;
- what shape your trade mark will take;
- who will own it;
- whether any comparable markings exist;
- elements you cannot trade mark; and
- whether it would be wise to trade mark your slogan.
For more information about applying for a trade mark, contact our experienced IP lawyers on 1300 657 423.
Frequently Asked Questions
Yes. You can certainly trademark a catchphrase if you can prove it is connected to your business.
Looking in the trade mark registry is a great place to start. Indeed, check everywhere for anything that looks like your mark. If a trade mark is identical to yours, though is not registered, do more research to see if it has been in continuous use.