Considerations Before Registering Your Private Company’s Logo as a Trade Mark

George Raptis

• 14 June 2023
• 4 July 2023
• 5 min read

Consider registering trademarks if you want to protect your private company’s intellectual property (IP). Registering your company logo can provide more substantive protection under the Trade Marks Act. You can obtain the exclusive right to use, license and sell your private company’s logo. However, before you file to register your company logo with IP Australia, you should consider:

• whether filing a composite mark is more beneficial to your company;
• conducting a trade mark search to ensure a similar or identical trade mark does not already exist; and
• which trade mark classes you should include in your application.

Composite Marks

Trade marks are more than just a company logo. Instead, a trade mark can include your:

• business name; 
• slogan; 
• distinctive colour; and 
• even smell. 

For this reason, you might consider registering a composite mark.

What is a Composite Mark?

A composite mark can protect the overall impression of your business logo and business name. For example, the McDonald’s logo is a composite trade mark. This is because the fast-food chain’s logo contains multiple aspects, including the word ‘McDonald’s’ and an image of the golden arches.

A composite trade mark can be a great option for private companies. Namely, you can:

• save time and costs by registering one trade mark application instead of registering two separate applications; and
• develop a distinctive brand image that combines both your business name and logo.

However, you should note that owning a composite trade mark can make rebranding difficult in the long term. This is because if you own a registered composite trade mark that contains both your business name and logo, rebranding your logo would mean that:

• the trade mark would become obsolete; and
• the remaining elements of the mark (i.e. your business name) will not enjoy separate trade mark protection.

Ultimately, if you will use your company’s logo and business name separately, consider registering these elements separately. 

What are Similar or Identical Trade Marks?

Another point to consider before registering a trade mark is whether an identical or similar trade mark already exists. At its core, a trade mark must distinguish your company’s goods and services from others in the market. For this reason, IP Australia will likely reject your trade mark application if it is similar or identical to an existing mark.

To minimise your chances of IP Australia rejecting your application, you should search the Australian Trade Mark Search. By entering the keywords in your logo or uploading an image of your logo, you can identify whether another business has already registered a similar or identical trade mark.

In saying that, there could be instances where IP Australia accepts two similar trademarks. For example, a bookstore in Sydney might have a registered trademark similar to a trade mark that a restaurant owner uses in Melbourne. In this instance, the trademarks could co-exist since they protect different goods and services in different industries.

Trade Mark Classes 

When you file your trade mark application with IP Australia, you must specify which goods and services you want your registered trade mark to protect. This is important given your trade mark protection will only cover the goods and services IP Australia accepts in your application. 

For example, suppose your company offers physical therapy and sells essential oils but you only register your company’s logo in connection with therapy services under class 44. In that case, your trade mark protection will not extend to the sale of the essential oils.

When specifying goods and services in your application, most applicants use the picklist. The Picklist or Trade Mark Classification Search categorises common goods and services into 45 classes. When searching the picklist, you should bear in mind that:

• goods can be found in classes 1 to 34; and
• services can be found in classes 35 to 45.

Once you file your application with IP Australia, you cannot include additional classes in your application. Instead, you can only remove some of the classes you included. Whilst including as many classes as possible will give you the best chances of trade mark registration, this is both unnecessary and costly. Ultimately, you should take the time to identify all potential classes and then decide which is most relevant for your company. An experienced trade mark lawyer can advise you on which classes are the most appropriate.

Key Takeaways

Before you register your company’s logo as a trade mark, you should think about:

• registering a composite trade mark if you intend to use your logo and company time together;
• conducting a trade mark search to ensure a similar or identical mark does not already exist; and 
• the relevant trade mark classes you should include in your application.

If you are considering registering your company’s logo as a trade mark with IP Australia, 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