Mistakes to Avoid When Registering a Trade Mark for a Fashion Label
Given the highly competitive nature of the fashion industry, it is important to take measures to protect your intellectual property. With this in mind, trade mark registration can provide you with the adequate protection your fashion label needs to prevent others from misappropriating your brand. To help, this article outlines trade mark basics and some common mistakes you should avoid when registering a trade mark in connection with clothing goods.
Trade Mark Basics
A registered trade mark protects the intellectual property in your brand. It can protect brand elements like a fashion label’s:
- recognisable name;
- distinctive logo;
- slogan; and
- particular colour.
Once you obtain a registered trade mark, you possess the exclusive rights to use, licence and sell your mark. This means that if someone commits trade mark infringement, you have the legal means to prevent the person from committing further infringements.
Trade mark infringement occurs when someone uses a similar or identical trade mark concerning similar goods and services as your own trade mark without your permission. For example, a boutique clothing company that uses the label ‘Prada’ would likely be infringing on Prada S. A.’s trade mark rights.
With a registered trade mark, you have legal avenues to pursue if there has been an unauthorised use of your trade mark. Therefore, you can market your clothing brand without fear of others misappropriating or copying it. Hence, a registered trade mark is an ideal way to promote your clothing business.
From the requirements of your application to the short and long-term business considerations you have to make, there is a complex process that goes into registering a trade mark. For this reason, many brand owners fall into certain traps when applying for a trade mark. We detail common trade mark mistakes below.
1. Common Descriptions
Trade marks must be capable of distinguishing your products from others in the fashion industry. Consequently, if you attempt to register a trade mark that includes ordinary descriptions, common surnames or geographical names, there is a higher chance that IP Australia will reject your application. This is because other labels in the industry would likely benefit from using such descriptions.
For example, if you attempt to trade mark words like ‘fashionable’ or ‘stylish’ to describe your clothing product, IP Australia is unlikely to accept these ordinary descriptions alone. Similarly, if you attempt to trade mark the name of a place that is particularly connected with the fashion industry, like Paris or Milan, this too can be difficult to register.
2. Avoid Registering a Similar Trade Mark
This may seem like an obvious mistake to avoid but many brand owners attempt to trade mark a sign that other fashion companies have already registered. This can lead to IP Australia rejecting your application. Alternatively, if your mark is registered, you may potentially face opposition proceedings from a third party.
Before registering a trade mark, conduct a comprehensive search of the Trade Mark Register. You can search for the mark you wish to register by entering its keywords in the search bar or uploading an image of your logo. Further, conducting a trade mark check is vital to ensure that you are applying for a unique and available sign for registration.
3. Avoid Choosing the Wrong Class
When you register a trade mark, you must register it in connection with the goods and service your business offers. When filling out a standard trade mark application, you must identify which ‘class’ your goods and services fall under.
The Trade Mark Classification Search is a class system that organises common goods and services that trade marks can protect.
Some classes which may be relevant to your fashion label include:
- class 25 – clothes, shoes and hats;
- class 26 – clothing accessories; and
- class 42 – clothing and fashion designs.
Additionally, it is important that you clearly identify trade mark classes that are relevant to your fashion label in your application. Your trade mark is only capable of protecting the goods and services that IP Australia approves in your application. For example, if your fashion label sells clothes and bags but only has a trade mark concerning clothing, your registered trade mark can only be used to protect the clothing items.
Once you submit your application for IP Australia’s review, you can only make minimum amendments. That is, you can only exclude classes in your application rather than add additional classes. To avoid the costs and time involved in submitting a new trade mark application, you should identify your relevant classes from the start.
When registering a trade mark for your fashion label, you should:
- avoid registering trade marks that contain ordinary descriptions;
- conduct a trade mark search to ensure your intended trade mark has not already been registered; and
- identify the classes that are most relevant to your business.
Frequently Asked Questions
Similar to trade mark infringement, copyright infringement occurs when someone misuses your creative work without your permission. Where trade marks protect your brand, copyright protects literary, dramatic, artistic and musical works.
If IP Australia revokes your trade mark application, you may have grounds to appeal to the Federal Court. In this instance, you should seek the advice of a trade mark attorney who can provide you with a better indication of the strength of your case.