Should I Register a Trade Mark for My Business Name and Logo Separately?
Many small business owners use registered trade marks to protect their intellectual property. Registered trade marks can protect the features of your brand that make it distinguishable. This is because a registered trade mark gives you the exclusive right to use, license and sell your trade mark concerning your business’ goods and services. To cut down on costs and save time, some owners believe that they should register a combined trade mark that contains both their business name and logo. However, for the reasons explained in this article, you should consider registering a trade mark for your business name and logo separately.
Understanding Different Types of Trade Marks
There are different types of trade marks that are relevant to registering a business name or logo. You can register a:
- word mark, which can protect your business name, not limited to any particular font or styling;
- device mark, which can protect the overall impression of your business logo, including its shape, orientation and style; and
- composite mark, which can protect the overall impression of your business logo and business name.
For example, the Levi Strauss & Co logo is a composite trade mark. This is because the iconic denim brand’s logo contains many aspects, including its words, colour and images.
A composite trade mark may seem like a good option in some circumstances. Namely, you can:
- develop a distinctive brand image that combines both your business name and logo; and
- save time and costs by registering one trade mark application instead of registering two separate applications.
However, you should balance these benefits with some of the following considerations.
1. Trade Mark Protection
You should note that if you register a composite trade mark for your business name and logo, your business name alone is not necessarily protected by a trade mark. That is to say, only the overall impression of the image, including your business name and logo, is protected.
This means that if a specific marketing strategy requires you to use your business name but not your logo, trade mark protection will not extend to your business name if you use it in isolation.
2. Changing Your Business’ Logo
Another point you should consider is the likelihood of rebranding your business. Rebranding can allow you to remain competitive in your changing market. However, if you own a registered composite trade mark that contains both your business name and logo, this would become obsolete in the instance where you rebrand your business logo.
You might have to register a completely new trade mark in this instance, and your existing registration could become worthless. Bear in mind that trade mark registrations are subject to a ‘use’ requirement. This means that you should always use the trade mark in the form you have registered it. If you are using a logo separately or using your business name separately (without the logo component), this is generally also how you should register these elements – separately.
3. Competitors Misusing Your Business Name or Logo
By registering both your business name and logo in one trade mark, you place your intellectual property in a vulnerable position by limiting your rights to that particular combination. This is because it increases the risk that a competitor could get away with using a similar name or logo separately without necessarily infringing on your intellectual property rights. This could lead to a downturn in profits and damage your business’ reputation.
If you are thinking about registering your business name and logo separately, there are some other relevant considerations set out below.
1. Someone Has Already Registered Your Desired Trade Mark
IP Australia can reject your trade mark application if it is substantially identical or deceptively similar to an existing trade mark. You may have to consider changing your business name or logo in this instance. This is because even if you continue to use the name or logo without registering a trade mark, you may be infringing on someone else’s intellectual property rights.
To avoid this occurring, you should conduct a trade mark search and a business name search before registering a trade mark and business name, respectively. You can do this by entering your desired business name in the Trade Mark Search and Business Name Register. You should note that your obligation to register a business name is separate from protecting any intellectual property rights in a name. To find out more, feel free to contact one of our lawyers.
2. You Only Have the Budget to File One Trade Mark Application
We understand that the process of registering trade marks can be relatively expensive for a startup. If you can only afford the registration fees for one trade mark, you should decide whether your name or logo needs to be protected first. This depends on how you market your goods and how your brand is recognised in the market.
Generally, most businesses choose to register a trade mark for their business names first, then register a trade mark for their logo later. However, registering both trade marks as a preventative measure can outweigh the potential costs that accompany trade mark disputes.
A composite trade mark can protect the overall impression of an image, including your business logo and name. Although registering a composite trade mark can save you costs and time associated with filing a trade mark application, it can restrict how you market your goods and services. This is because your business name and logo are only protected when you use them together, as opposed to in isolation.
Frequently Asked Questions
A composite trade mark protects a trade mark’s overall impression, including different words, shapes, sounds, scents, and colour elements.
Whilst you must register your business name with ASIC as a legal requirement, you do not have to register a trade mark to protect your business name. Rather, registering a trade mark is optional.