Points to Consider Before Registering Your Clothing Brand’s Slogan as a Trade Mark

George Raptis

• 16 March 2022
• 30 March 2022
• 5 min read

A slogan can help differentiate your business from competitors and, therefore, be one of your most valuable assets. Like any valuable asset, you should take specific measures to protect your slogan. However, before you register your slogan as a trade mark, you should consider whether:

• your slogan is substantially identical or deceptively similar to another trade mark;
• your slogan is merely descriptive or laudatory; and
• which trade mark classes and goods/services to cover in your application.

This article provides further detail on the points above and the benefits of trade mark protection.

Benefits of Registering Your Trade Mark

Registering your trade mark provides more robust legal protection than if your trade mark was unregistered. This is because if someone copies or misuses your unregistered trade mark, enforcing your rights may be much more complicated. Alternatively, as a registered trade mark owner, you enjoy the exclusive right to use your trade mark. This means you can prevent other people from infringing on your registered trade mark.

Trade mark infringement can occur when someone uses your registered trade mark concerning goods and services that are identical or similar to those that your registration covers.

In this sense, you can benefit from registering your clothing brand’s slogan as a trade mark since it can:

• prevent others from copying or misusing your unique slogan;
• help differentiate your clothing brand from other businesses in the fashion industry; and
• provide your business with commercial opportunities through licensing and selling your trade mark.

However, before registering your trade mark, you should consider the following points.

Is Your Trade Mark Similar or Identical to Another Trade Mark?

IP Australia is unlikely to accept a trade mark application that is similar or identical to an existing trade mark on the Australian trade marks database.

To avoid registering an identical or similar trade mark, you should search the Australian Trade Mark Search. You can conduct a trade mark search by entering the keywords of your slogan into the Search. 

You should note that identical trade marks for different goods/services can co-exist on the Australian trade marks register. For example, a boutique clothing store might have a registered trade mark that is similar to a trade mark connected to a cafe. In this instance, IP Australia may approve both applications, given that the trade marks protect completely different goods and services in different industries.

If you are unsure whether your trade mark is similar to an existing mark, it would be wise to contact an experienced trade mark lawyer. This way, your investment in trade mark registration is worthwhile and likely to meet IP Australia’s requirements.

Is Your Slogan Too Descriptive?

Another point you should consider before registering your trade mark is whether your slogan is too descriptive. IP Australia is unlikely to accept an application if your slogan contains words that are descriptive, laudatory, or in common use. This is because other fashion businesses would have a legitimate need to describe their goods/services using the same or similar words.

To avoid applying for a trade mark that is too descriptive, you should ensure that your slogan does not merely describe the goods your business sells. Instead, it should be unique to your business.

Have You Selected the Right Classes for Your Clothing Brand?

When you file a trade mark application, you must specify what goods and services you want your trade mark to protect. You should note that you cannot expand your list of goods and services once you submit your application to IP Australia. Instead, you can only limit or delete classes and goods/services.

To help you simplify the application process, you can use the Trade Mark Classification Search. The Classification Search or picklist contains descriptions of goods/services that have been pre-approved by IP Australia, which are divided into 45 classes. Classes 1 to 34 cover goods, and classes 35 to 45 cover services.

It may be tempting to include as many relevant classes as possible to gain robust protection. However, this is both costly and can lead to further legal issues down the line if you do not actually use the trade mark concerning the goods and services you have registered for. To avoid this, you should apply for only the goods and services you provide or intend to provide in the near future. Some classes which may apply include:

• class 25, which includes clothing, shoes and hats;
• class 35, which includes retail services for the sale of clothing of other manufacturers; and
• class 42, which includes clothing and fashion designing.

If you are unsure which classes to include in your trade mark application, it would be worth seeking legal advice from an experienced trade mark lawyer. 

Key Takeaways

By registering your clothing brand’s slogan as a trade mark, you can freely use your slogan  with the assurance that it is registered and protected. Before you apply to register your trade mark with IP Australia, you should:

• conduct a trade mark search to ensure your slogan is not similar or identical to an existing trade mark;
• ensure your slogan does not merely describe your business’ characteristics or goods; and 
• select the trade mark classes that adequately protect your goods and services.

In any event, our experienced trade mark lawyers can help you register a trade mark to protect your business. Call us on 1300 657 423 or complete the form on this page.

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