Trade Mark Registration Tips for Your Sports Club
George Raptis
As the owner or organiser of a sports club, you might be thinking what forms of intellectual property exist within your club. You would be surprised to know that your club’s ‘brand’, including features that make up its reputation, can be protected through trade marks. To help you decide whether to apply for a registered trade mark, this article outlines some registration tips for your sports club.
Trade Mark Basics
Trade marks are more than just a logo. They protect the features of a brand that make it distinguishable from others. For a sports club, this can include their name or distinctive log. It might also include a unique combination of team colours that are instantly recognisable to your players, fans and competing sports teams.
A registered trade mark provides you with the exclusive right to use, licence and sell your mark. This means that no one can misuse your trade mark without your permission.
Some notable sports teams in which have a registered trade mark in Australia include the:
- national rugby union team the Wallabies;
- national netball team the Diamonds;
- NSW Waratahs; and
- Melbourne Storm Rugby League Club.
It is important to protect your sports club’s brand through a trade mark to prevent others from reproducing features of your club, like its name or logo. For example, others might wish to reproduce and make a profit from jerseys and mascots without your permission.
Likewise, just like how you would judge an everyday business based on its reputation, so too will others judge your sports club based on its reputation. Your brand can represent your club’s athletic achievements but also its ethics and sportspersonship. Hence, you must take the necessary precautions to protect your brand from being misappropriated by others.
Benefits of Trade Mark Protection
There are many reasons why your sports club can benefit from trade mark protection. The main benefits to obtaining a registered trade mark are that trade marks:
- give you the legal means to enforce your rights where someone commits trade mark infringement;
- can allow you to freely market your sports club’s brand without fear that it goes unprotected. This means you can build your sports club’s reputation and visibility in the sports industry; and
- allow you to licence or later sell your trade mark, opening up an additional stream of revenue for your sports club.
Trade Mark Registration Tips
Before you begin to apply for a registered trade mark for your sports club, you should consider the following tips.
1. Choosing a Relevant Trade Mark Class
Many applicants are unaware that they must register their trade marks in connection with a class or classes of goods and services. The Trade Mark Classification Search is a class system that categorises common goods and services under different headings. When you apply for a registered trade mark, you must select the classes that indicate the goods and services your club offers and that you wish to protect.
Some common classes that sports clubs include in their trade mark application include class:
- 25 – clothing, footwear and headgear;
- 28 – footballs and sporting articles; and
- 41 – publications and newsletters.
You must identify all the relevant classes applicable to your club in your initial application. This is because once you submit your application to IP Australia, you can only take away trade mark classes, not include additional classes. In the instance where you wish to include additional classes, you will likely have to submit a whole new trade mark application.
2. Choosing a Suitable Trade Mark Application
When applying for a registered trade mark, there are different options for registration. Amongst these options, IP Australia allows you to file a standard application or a TM Headstart application.
Under a standard trade mark application, you must fill out a standard form to include:
- a description of your sports club’s brand that you intend your trade mark to protect (i.e. your club’s name or logo);
- information about you as the trade mark owner; and
- the applicable class of goods and services that your trade mark will apply.
All these requirements under a standard trade mark application are also required under a TM Headstart application. However, a TM Headstart application provides you with an additional service. A trade mark expert at IP Australia will assess your application before it is submitted for review by IP Australia. This provides you with the opportunity to identify any potential errors in your trade mark application and make amendments before you formally submit it.
Key Takeaways
Trade marks can protect your sports club’s brand from others copying or misappropriating it. Since trade marks give you the exclusive right to use, licence and sell your mark, you can freely market your sport club’s brand without fear that it is left unprotected in the market. When registering a trade mark, you should also:
- pay particular attention to the trade mark classes you are registering your application in connection with; and
- decide whether a standard application or a TM Headstart application will be more beneficial to you.
If you need help with registering a trade mark for your sports club, contact our experienced IP lawyers on 1300 657 423.
Frequently Asked Questions
If you intend to prevent others from misusing your sign but it is not a registered trade mark, you can use the trade mark symbol ‘™’. You should note that it is an offence to use the reserved symbol ‘®’ on anything other than registered trade marks.
Under the Trade Marks Act, trade mark infringement occurs when someone uses a similar or identical mark to your own trade mark, concerning similar goods and services.