Trade Mark Triumph: How Unique Names Improve Your Brand Recognition
Discover the power of unique business names for brand success. Learn how a distinctive name boosts confidence, visibility & resonates with your audience.
Read MoreOctober 1, 2018
In recent weeks, we have talked a little bit about intellectual property, and taken a closer look at copyright. Now, we are going to investigate another important form of intellectual property – Trade Marks.
As we have discussed, there are three main types of intellectual property. Copyright protects an original artistic or literary work. Patents protect an invention or novel method of doing something. A trade mark protects your brand’s reputation, usually in relation to the names and logos used on goods and services.
Section 17 of the Trademarks Act 1995 (Cth) defines a "trade mark" as:
"Sign" is defined in s 6 of the Act as including any letter, word, name, signature, label, ticket, aspect of packaging, shape, colour, sound, scent or any combination of them.
The main function of a trade mark is to enable consumers to quickly distinguish your goods and services from those of your competitors.
I’m going to use Cadbury’s chocolate as an example (because who needs an excuse to spend time thinking about chocolate?) Cadbury UK Ltd have applied for 455 Australian Trade Marks, and have successfully registered 305.
Among these are:
To be capable of forming a trade mark, the sign that you use to identify your business or product must be distinctive. This means it must be unique, and not substantially identical or deceptively similar to any other existing mark. You are also prohibited from registering a mark that is too risqué, references something illegal, or that is likely to deceive consumers into thinking your business is something that it is not.
A strong trade mark is creative and unusual. You can protect it effectively because it is so unique to you that you can easily notice if someone else uses it and have a clear argument for your right to ownership. The strongest marks are those that are arbitrary or fanciful.
Arbitrary means a word or image that is taken out of context. Think of Apple computers, Nike (name of the goddess of Victory) for sports gear, or Shell petrol.
Fanciful refers to a word, phrase or image that is made up or invented and has no intrinsic meaning. Think of Adidas, Starbucks, or Google. These are the best marks, because the only meaning associated with them is the one that you build through your business activities.
If you are not ready for an arbitrary or fanciful mark, at least consider a mark that is suggestive. These kind of marks hint at the product or service that you offer without falling into the trap of being descriptive.
Examples of suggestive trade marks include General Electric, Microsoft and Android.
A weak mark is generally a word or phrase that is descriptive or generic. It will be difficult and costly to enforce because others in the market place have every right to use it to describe the goods and services they offer, too. Descriptive marks will generally be rejected for registration unless they have acquired distinctiveness through a long history of use, or are presented in a unique graphical format. However, they remain more expensive to enforce due to the increased likelihood that others in your industry will want to use the same terms as your trade mark.
Some examples of descriptive trade marks that have featured in Australian court cases include the Kettle Chip Company, Chemist Warehouse and The Reject Shop.
Registration of a trade mark is not mandatory. You may have seen names or logos displaying a ™ mark. This means that the business owner claims “common law” rights in an unregistered trade mark. In fact, if you have been using a name or logo consistently in your business, you may well have been building up your own unregistered trade mark – and you could certainly display the ™ sign after it. This symbol is internationally recognised, and while it does not guarantee that your mark is protected, it puts potential competitors on notice of your intention to defend it.
To enforce an unregistered trade mark in Australia, you would need to bring an action under the Australian Consumer Law, claiming that the person using your mark was “passing themselves off as you” and attempting to trade on the reputation that you have built in the marketplace. The Consumer Law also protects against misrepresentation and misleading and deceptive conduct, which can both be used where the infringement of your trade mark is creating (or potentially creating) confusion in the market place.
When you register a trade mark, you gain the right to display the symbol ® after your name or logo. Registration is only effective in the country where it is registered, but under the Madrid convention, a trade mark that has been registered in Australia can more easily be registered in other countries. The international registration can be quite expensive, however.
There are several advantages to registering your trade mark. A registered trade mark is much easier to enforce, as you have a legal right to exclusive ownership. This means that you are the only person allowed to use that mark to advertise or sell the goods and services that you selected during the registration process. If someone attempts to use your mark, you don’t have to prove your right to protect your reputation in the mark, as you do with an unregistered trade mark. You just have to show your certificate of registration to attract a range of legislative penalties.
(In the interests of complete disclosure, it is important to point out that even a registered trade mark can face problems if the other person was honestly using the mark before you registered it.)
Legal issues aside, what are the business advantages of registering a trade mark, and how do you know when should you do it?
Registering your trade marks can be very useful:
As a bonus reason, the more unique your name or logo is, the less likely you will ever have to defend it, but having registered it as a trade mark makes it more likely that people doing their own due diligence when choosing a business name will become aware of your rights and choose something else, so registration also provides some level of automatic deterrent.
You know I am all in favour of DIY, and applying for a trade mark yourself is quite possible. However, there is a steep learning curve involved, and having a lawyer on hand can be helpful, as we have more experience with the comprehensive searching needed during the due diligence stage, we are familiar with the process and able to advise you of the options available to you if things go wrong, and because navigating the choice of classes can be quite confusing. If you would like help, my Due Diligence Consultation is the place to start.
Discover the power of unique business names for brand success. Learn how a distinctive name boosts confidence, visibility & resonates with your audience.
Read MoreDiscover the importance of auditing your intellectual property to protect your brand, avoid legal disputes, and increase opportunities. Learn how to enhance the reputation and value of your business through a consistent appearance and voice.
Read MoreDiscover why it’s essential to conduct regular searches and take action to preserve your ownership of trade marks. Learn more about protecting the integrity of your brand identity on our blog.
Read MoreLearn what steps you can take if your copyright is infringed. This blog post explores everything from identifying which intellectual property assets are protected by copyright to deciding what action to take.
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