Benefits of Registering a Trade Mark for Your App
App creators might avoid trade marks for their app for a variety of reasons. This could be a result of the perceived costs involved in the process of registering a trade mark, the time it takes to apply for a trade mark or a general unawareness of the benefits of trade mark protection. However, trade mark protection is important to help protect both your app and your business as a whole. This article outlines four key benefits of registering a trade mark for your app.
1. Protection Against Misuse
A registered trade mark can protect the features of your app that distinguish it from other apps in the marketplace. For example, a video game app might trade mark its:
- logo; or
- catchphrase used to market the app.
A registered trade mark owner has the exclusive right to use, licence, and sell their trade mark. This means that in the instance where someone else uses a mark that is identical or similar to their own trade mark concerning a similar good or service, the trade mark owner has the right to stop the other person from misusing their mark. This is trade mark infringement.
For example, a game developer who uses the title ‘League of Legends’ concerning their app would likely infringe on the trade mark rights held by Riot Games Inc.
By registering a trade mark, you can ensure that you have legal remedies available to you to prevent others from misusing your trade mark and potentially damaging your app’s reputation.
2. Gaining a Reputation
Since trade marks give you the right to use a trade mark to the exclusion of others, you can develop a distinct brand identity. Put simply, trade marks protect the features of your app that make up its distinctive brand, like its name or logo.
For example, some instantly recognisable video game logos are the cursive words of the title ‘Candy Crush’, or the interactive board game ‘Words With Friends’. Both of these names are trade marks, by King.Com Limited and Zynga Inc. respectively.
Since the quality of your app is linked with its name and logo, it is worthwhile ensuring that competitor apps cannot misuse your brand in a way that might diminish its reputation.
3. Avoid Trade Mark Infringement Claims
By undergoing the process of registering a trade mark, you can also avoid committing trade mark infringement. As mentioned above, trade mark infringement occurs when you use a similar or identical mark to an already registered trade mark concerning the same good or service.
When you begin to apply for a trade mark, you will need to conduct a trade mark search to identify any potential similar or identical trade marks to the trade mark you intend to register. Consequently, there is less of a chance of having your application rejected by IP Australia or opposed by another trade mark owner, given you will register a trade mark that is not already on the Australian Trade Mark Search.
4. Commercialising Your Trade Mark
Many trade mark owners are unaware of the commercial benefits of owning a trade mark. A trade mark owner has the exclusive right to also licence and sell their trade mark.
Licensing refers to the agreement between the trade mark owner (the licensor) and another person (the licensee). Depending on the terms of the agreement, the licensee can use the licensor’s trade mark over a specific period of time for an agreed fee. For example, the creator of video game software might contact Riot Games Inc. to negotiate a licensing agreement for one of their many app names. Depending on the licensing agreement, the licensor may or may not be able to use their trade mark alongside the licensee during the licensing period. However, the licensor remains the owner of the trade mark throughout the licensing period.
On the other hand, you can also sell trade marks. Since trade marks usually represent the value of your app’s goodwill and reputation, they can add value to the sale price of your app. When selling a trade mark, you must undergo the process of assignment. Put simply, an assignment of a trade mark involves the registering of the change in trade mark ownership via IP Australia. Once you have fully assigned your trade mark, you are no longer the owner and no longer enjoy the exclusive rights associated with the trade mark.
A registered trade mark can protect the features of your app that make it distinguishable by giving you the right to prevent others from misusing your app’s name or logo. Trade marks can also help your app develop its brand image and consequently gain a competitive advantage in the marketplace. By registering a trade mark, you can also limit your chances of committing trade mark infringement and have the opportunity to commercialise your mark. If you need help with registering a trade mark for your app, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
Under the Trade Marks Act, a registered trade mark is protected for 10 years from its filing date.
Trade marks will only be able to protect the features of your video game software that make it identifiable, such as its name. If you want to protect the function of your software, you should consider registering for a standard patent with IP Australia.