Points to Consider Before Registering a Short Phrase As a Trade Mark
George Raptis
A phrase as simple and short as ‘I’m lovin’ it’ can elicit a distinctive brand image in the minds of many consumers. Where you use a short phrase to distinguish your business’ goods and services from others in the market, you might consider registering it as a trade mark. A registered trade mark can give you the exclusive right to use your short phrase in relation to your goods and services. This means that you can prevent other businesses from copying or using your short phrase concerning similar goods and services. However, before you register your trade mark, you should consider the following points.
Why Register Your Trade Mark?
In short, trade mark registration gives you more robust legal protection than an unregistered or common law trade mark. If someone copies or misuses your common law trade mark, enforcing your intellectual property rights is much harder. On the other hand, if IP Australia approves your trade mark application, you enjoy the exclusive right to use, license and sell your trade mark. This means that you can prevent other people from using your brand for the same or similar products or services.
In this sense, you can benefit from trade mark registration since it:
- protects your brand from being copied by your competitors;
- helps differentiate your brand from other businesses; and
- provides your business with commercial opportunities through licensing and selling your trade mark.
Is Your Trade Mark Similar or Identical to Another Trade Mark?
At its core, a trade mark must be capable of distinguishing your business from others. Consequently, you cannot register a trade mark that is the same or similar to another trade mark. IP Australia can reject your trade mark application if it is similar or identical to an existing mark.
In this instance, IP Australia will first determine whether the trade marks are substantially identical. This involves a side-by-side comparison of both trade marks where the similarities and differences are identified. Even if both trade marks are not identical, IP Australia may still find that they are deceptively similar. IP Australia will deem a trade mark as deceptively similar to an existing trade mark if either trade mark would deceive an ordinary person.
To avoid registering a trade mark that is similar or identical to an existing trade mark, you will need to search IP Australia’s Australian Trade Mark Search System. You can conduct a trade mark search by entering the keywords of your short phrase into the search.
You should note that there can be instances where IP Australia accepts two trade marks of a similar nature. For instance, a small restaurant in Melbourne may be able to register a trade mark that is similar to a trade mark connected to a boutique clothing store in Adelaide. In this instance, IP Australia may approve the trade mark application given the trade marks protect different goods and services in different industries.
If you come across a similar or identical short phrase, you may have to alter your trade mark application. If in doubt, you should get in touch with an experienced trade mark lawyer.
Is Your Short Phrase Too Descriptive?
Another hurdle trade mark applicants face is whether their short phrase is too descriptive. IP Australia is unlikely to accept an application if your short phrase contains a commonly-used description. For example, if you own a construction company, the phrase “We Build Homes” is not likely to be successful. This is because trade marks that are this descriptive should be available for all traders to describe their goods and services.
To avoid applying for a trade mark that is too descriptive, you should ensure that your short phrase does not merely describe your business’ characteristics or the goods or services that your business provides. Instead, it should be unique to your business. Some notable examples of short phrases that are not descriptive include Nike’s “Just Do It” and Nestle’s “Have a Break, Have a Kit Kat.”
Are You Planning On Using Your Short Phrase?
This may seem like a confusing question, especially if you are going to great lengths to register your trade mark. However, you can lose your registered trade mark if you do not use it.
Any person can apply to remove your registered trade mark if:
- your trade mark has remained registered for a continuous period of three years; and
- You used the trade mark at no time during this period in Australia.
Someone can file a removal application after five years have passed if you filed a trade mark before 24 February 2019, or three years have passed if you filed a trade mark on or after 24 February 2019.
Considering the money and time you will invest in filing a trade mark application, you want to make sure that you will use your short phrase in the day-to-day operation of your business.
Key Takeaways
Before you register your business’ short phrase as a trade mark, you should:
- conduct a trade mark search to ensure a similar or identical trade mark does not exist;
- ensure that your short phrase does not merely describe your business or the goods and services it offers; and
- plan to use your short phrase throughout the day-to-day operation of your business.
If you need help filing a trade mark application for your short phrase, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
Unlike a trade mark, copyright does not protect names, titles, slogans or short phrases.
The cost of a trade mark application depends on a range of factors. For example, a standard trade mark application that uses the picklist will cost $250 per class of goods and services you include in your application.