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The ins and outs of protecting your brand

trademarks
Sharon Givoni
Written by Sharon Givoni

TRADEMARK REGISTRATION AND ITS BENEFITS 

Trademark protection is by far the best sort of protection that you can get for your brand, in your name.

Subject to some minor exceptions, it gives you exclusive rights to use the brand in Australia. Domain name, company name and business name registrations are merely administrative and do not give you any ownership rights in the names. Don’t get fooled into thinking otherwise. The other beauty of owning a registered trademark is that you can then display the ® symbol next to it to show everyone that the mark is registered. This serves as a warning, or to put it more bluntly – a “back off” symbol to ward off unscrupulous copycats.

Whether it’s your very own name, or a made up name such as KODAK, your brand name forms an important part of the personality and image of your business and the more you use it, the more you build up goodwill and reputation in it. Taglines also count – for example the phrases “glass and a half”, “oh what a feeling” and “moments like these” speak for themselves without any reference to the brand to which they relate. Those can be protected as trademarks as well.

trademarks - protecting your brand

The requirement of distinctiveness

The big rule for you to remember is that the brand must be distinctive if you want to own it. You cannot register PICNIC for a picnic basket, but you can register it for chocolate. MIMCO and other made up terms are registrable as well, as they do not describe the good or service.

When it comes to shapes, colours or sound marks, if they have a purely functional purpose then they would generally not qualify for registration, as other traders could have a legitimate need to use the same mark for their own goods or services.

Examples could be fluorescent yellow used for safety gear at night, red to signify danger, or the shape of the handles and blade assembly for a pair of scissors, which are necessary for the functioning of the article.

Purely decorative or economic functions are also problematic, the key being that there must be no proven competitive need for properly motivated traders to use the colour or shape.

Benefits of trademark registration

While trademark registration is not compulsory, it does hold significant advantages. These include:

  • A registered trademark is personal property. It can be assigned or licensed to others, for example, in return for payment to the owner of the registration;
    It allows the owner of the registration to prevent the unauthorised use of the trademark in relation to the same, similar or closely related goods or services;
  • It places the public on notice of the owner’s rights and provides a relatively quick and cheap method of enforcing those rights. Generally, all that needs to be shown is that the trademark which allegedly infringes the owner’s trademark is “substantially identical” or “deceptively similar” and is used in respect of similar goods or services;
  • Registration of a trademark is Australia-wide;
  • The application or registration of a trademark will help to prevent other traders from obtaining registration for a subsequently filed trademark which is identical or similar;[2]
  • Registration of a trademark provides a defence against trademark infringement proceedings brought by the owners of other registered trademarks;
  • Trademark registrations can be perpetual, as they can be renewed indefinitely;
  • Registration entitles you to use the “®” symbol to put the public on notice of your trademark rights;
  • It places the public on notice of the owner’s rights.

trademarks - protecting your brand


[2] Unless the “prior continuous use” or “honest, concurrent use” provisions of the Trade Marks Act apply.

So I have my business name registered – is that enough?

A relatively common misconception is that a registered business name or company name gives the registrant some kind of proprietary right to use that name. Not so.

Business name registration is really no more than an administrative precondition, the purpose being to enable members of the public to identify the person who is operating the business.

Company names essentially fall into the same category, in that they too are merely procedural and registration does not give the owner of the name any rights to use it exclusively.

Registration is not enough – brands need to be managed

As the quote above implies, brands are long term assets. As such, they need to be managed that way.

Once you have obtained a trade mark registration for your brand, here are some tips on how to preserve it:

1. Trademark law is based on a “use it or lose it” philosophy. If you do not use your mark, third parties may challenge the registration on the basis of non-use;

2. Do not use your mark in a generic (descriptive) manner as they too may become vulnerable to removal from the Trade Marks Register. A good rule of thumb is to always use your trademark as an adjective, rather than as a verb or as a noun. For example, “KLEENEX Tissues” (correct use), rather than “Have a Kleenex”; “HOOVER vacuum cleaners” (correct use) rather than “Hoover the Floor with a Hoover”; “DOONA™ Quilt (correct use), rather than “DOONA”. Marks that have become generic include GRAMOPHONE, LINOLEUM and LAMINEX. Had the words “software” and “hot dog” been protected as trademarks from the time they were first used, they may not have become a common English word;

3. Renew your mark every ten years. Unlike patent and design registrations which expire after a fixed number of years, trademark registration can be perpetual, so long as you keep using the mark and renew it every ten years. Australian icons such as Arnotts’ parrot image, Bonds, Speedo, Vegemite and the Rosella image (for sauces) have been registered since the Trade Marks Office first opened in 1906;

4. Use the mark consistently. It is not advisable to change the spelling or the appearance of the mark without first discussing the proposed changes with your lawyer or trademark attorney;

5. Once your trademark is registered it is a good idea to display the “®” symbol next to it to show the world that this is your trademark. For unregistered marks, the “™” symbol may be more appropriate;

If you expand the range of goods or services sold or supplied in connection with your brand, consider applying to register the brand for those additional categories.

About the author
Sharon Givoni
Sharon Givoni

Sharon Givoni is a Melbourne-based intellectual property lawyer with clients in the creative industry. She does trademark and designs work as well as contracts and copyright advice. Sharon’s book Owning It: A Creative’s Guide to Copyright, Contracts and the Law, available through Creative Minds Publishing (www.creativemindshq.com/owningit), aims to demystify the law for creative business owners. Sharon can be contacted by email (sharon@iplegal.com.au) or called on 0410 557 907 or 03 9527 1334. Her website for “Sharon Givoni Consulting” is: www.sharongivoni.com.au.

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