Before Registering a Trade Mark for Your Startup, Ask Yourself These Questions
Since your brand is likely at a volatile stage of growth, it is important that you consider ways to prevent competitors from misusing your brand image. Fortunately, a registered trade mark can provide your startup with this invaluable protection. By asking yourself the following questions before you register a trade mark, you can determine whether trade marks are the right form of intellectual property (IP) protection for your business.
1. Would My Startup Benefit From Trade Mark Protection?
Put simply, a registered trade mark protects the features of your brand that make your startup distinguishable from others. As a trade mark owner, you have the exclusive right to use, license and sell your mark. Consequently, you can market your goods and services using your startup’s protected business name or logo.
A registered trade mark typically protects a startup’s:
- registered business name;
- distinctive colour; and
- smells associated with its brand.
One of the major benefits of trade marks is that you can enforce your rights in the instances where trade mark infringement arises. Since trade mark owners have the exclusive rights to use their mark, they can prevent other businesses from using their mark in relation to similar goods and services. For example, a boutique clothing brand can be prevented from marketing their goods under the name ‘Uniqlo’ as this would likely be considered trade mark infringement under the Trade Marks Act.
However, trade marks cannot protect all the IP within your startup. If your startup produces creative materials such as articles, infographics, music or artworks, these materials are protected by copyright law. On the other hand, if your startup sells or engages in an innovative process, these can be protected by a registered patent. For this reason, you should consider whether the IP within your startup can be protected via registered trade marks.
2. What Goods and Services Does My Startup Provide?
This may seem like a trivial question to ask, but it is an important consideration to make when registering a trade mark. Trade marks are registered in connection with goods and services. When filling out your application, you must identify which generic trade mark class your startup’s goods and services fall into. Once you submit your application for review by IP Australia, your registered trade mark is only capable of protecting those goods and services that IP Australia has approved in your application. For example, if your startup sells clothing and tailoring services but you only register a trade mark in connection with clothing, your trade mark might not provide adequate protection for your business.
To avoid registering an obsolete trade mark, you should first identify the different goods and services your startup provides. Then, you should decide which trade mark class these goods and services fall under. Doing so will ensure that you are applying for a trade mark that provides you with sufficient brand protection for your startup.
3. Will My Trade Mark Remain Useful in the Long Run?
When applying for a registered trade mark, it is easy to overlook the long-term trajectory of your startup. However, since trade marks are a big investment for your business, it is important that you consider your business’ long-term goals.
A registered trade mark can quickly become obsolete if it no longer protects the goods and services of your business. For this reason, many startups choose to include goods and services in their trade mark application which they may not offer currently but plan to sell in the future. Whilst you cannot possibly account for every venture which your startup might pursue, it is good to think ahead and consider what the likely pursuits which would require trade mark protection for your business are.
4. Which Trade Mark Application Should I Use?
There are different types of trade mark applications that IP Australia offers. Business owners of startups would typically consider a standard trade mark application, or a TM Headstart Application. A standard trade mark application will require you to include:
- your personal details;
- a description of your trade mark, i.e. your startup’s name or logo;
- the trade mark classes applicable to your business; and
- a description of the goods and services offered by your business.
Once you submit your standard application for IP Australia’s review, you only can make minimal amendments. If you wish to include additional trade mark classes which you forgot to include, it is likely that you will have to reapply at an additional cost.
On the other hand, a TM Headstart application involves the same requirements as a standard application. However, it involves an additional service. A delegate of IP Australia will review your application before it is submitted for formal review. This way, you can identify any potential errors in your application and make adjustments accordingly before you formally submit your application.
You should note that the fees involved with both applications do differ. A standard trade mark application will cost $250 per class of good and service included in your application. In addition, a TM Headstart application will cost $200 per class of good and service.
Before registering a trade mark for your startup, you should consider:
- whether trade marks are capable of protecting your startup’s IP;
- what goods and services your business provides that would most benefit from a trade mark;
- the long-term trajectory of your startup to ensure your trade mark remains useful; and
- which trade mark application to use.
Frequently Asked Questions
In Australia, trade mark law recognises both registered and unregistered trade marks. The main difference is that IP Australia does not approve an unregistered trade mark, but the mark may nevertheless protect your brand. In the instance where a trade mark dispute arises, however, owners of an unregistered trade mark would have to prove that their mark has gained a sufficient reputation in the market.
When you applied for your registered business name via ASIC, this was a legal obligation you had to fulfill in order to start trading as a business. However, registering your business name does not give you the exclusive rights to use it when marketing your goods and services. On the other hand, trade mark registration is not a legal obligation for your business. Rather, it is an additional protection you can apply for to obtain the exclusive rights to use your business name.