3 Mistakes to Avoid When Registering Your Name as a Trade Mark
Understandably, many business owners choose to trade under their family names. If you use your name to help establish your business’ identity within your community, you might be inclined to register your name as a trade mark. Put simply, a registered trade mark protects the goods and services that make up your business. When you gain the exclusive rights to use a registered trade mark, you can take legal action in the instance where someone copies or misuses your trade mark. However, before you register your name as a trade mark, you should ensure:
- your business name is capable of distinguishing your business from others;
- your business name is not a common name or surname; and
- you register for protection under the correct trade mark classes.
In this article, we will go through some mistakes to avoid when registering your name as a trade mark.
1. Your Name Does Not Distinguish Your Business From Others
Intellectual property can exist in many different circumstances. For a small business, its name, logo, unique processes or publications can all comprise its intellectual property. When it comes to a trade mark, the law only protects signs that help consumers identify your business and your branding. That is to say, your trade mark must be capable of distinguishing your business’ goods and services from others in the marketplace.
Since the process of trade mark registration can be costly, you might reconsider registering your name as a trade mark if:
- your name is unable to distinguish your business’ goods and services from others in the market; or
- acquiring trade mark protection will not necessarily help your customers identify your brand.
As with everything in law, there are exceptions to this rule. For example, if you have acquired a significant reputation within the marketplace for your generic business name, you may still be able to obtain trade mark rights.
In any event, you should seek legal advice before filing a trade mark application if you are unsure whether your trade mark will qualify for protection.
2. Registering a Common Name
At its core, a trade mark must distinguish one business from another. Consequently, IP Australia is unlikely to accept an application for a trade mark that lacks distinctiveness. This applies to common surnames like ‘Smith’ and ‘Jones’ or common first names like ‘Harry’ or ‘David’, which may be more difficult to register since they are so common.
Whether a name is common can depend on how many times it appears on the Australian electoral roll. For example, the Trade Mark Office recently rejected a trade mark application on the basis that the name ‘Barton’ was sufficiently common. At the time of their decision, the name appeared on the electoral roll 5100 times.
Additionally, you may also encounter difficulties if you want to file a trade mark that combines your common name and the goods and services you want to provide. For example, it would be difficult to register a trade mark for the name ‘John Smith’s Flowers Shop’. This is because the name ‘John Smith’ is common, and the title ‘Flower Shop’ is too descriptive of the goods and services you will provide.
Generally, if your surname appears less than 750 times on the Australian electoral roll, the Trade Marks Office is likely to deem it uncommon. If this is the case, you have a better chance of registering your name as a trade mark.
3. Registering for Protection Under the Wrong Class
When you apply to register a trade mark with IP Australia, you must select which goods and services you wish your trade mark to protect. Fortunately, you can use the trade mark picklist, which groups common goods and services into 45 different classes. Classes 1 through 34 contain goods, whereas classes 35 through 45 contain services.
Once you have filed your application with IP Australia, you cannot add any forgotten classes to your application. Instead, you can only remove classes that you included. If you have forgotten to include a class in your initial application, you will have to reapply to IP Australia with a new trade mark application at an additional cost.
For this reason, you must identify all the classes that are relevant to your business. Notably, you should note that many goods and services fall under more than one class. For example, “dry cleaning” related goods and services fall under three different classes in the picklist. However, selecting all these classes in your application may be both unnecessary and costly.
When selecting trade mark classes, you should consider seeking legal advice. An expert trade mark lawyer can help you select the appropriate classes to maximise your trade mark protection.
Many business owners choose to protect their intellectual property via trade mark registration. A registered trade mark gives you the exclusive right to use your trade mark, meaning you can take legal action if someone copies or misuses your trade mark. If you wish to register your name as a trade mark, you should ensure that:
- your name can distinguish your business’ goods and services from others in the market;
- you register a trade mark that is not a common name or surname; and
- you register the trade mark under the correct trade mark classes.
Frequently Asked Questions
If you use a trade mark to distinguish your goods and services from those offered by other businesses, but have not registered your trade mark with IP Australia, you may own a common law trade mark. In comparison to registered trade marks, it is much more difficult to enforce your rights to a common law trade mark in the instance where someone copies or misuses your intellectual property.
The cost of a standard trade mark will depend on how many trade mark classes you include in your application. Currently, you must pay $250 per trade mark class for your standard application.