One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Choosing a brand name
Commercial success for inventions and innovations does not solely rely on a good product. Along with the manufacture of high-quality goods, how the market perceives a product also dictates how well that product sells commercially. Good public sentiment towards the product, also known as goodwill, strongly influences how likely people would purchase a certain product from a certain company. This is where branding comes in. The brand is the face the company presents to the public and connects the product back to the company. Historically, branding referred to actual practice of searing a visible identifying mark onto livestock in order for strays to be traced back to their owners. The modern brand somewhat serves the same purpose.
Considerations in choosing a brand name
Possibly the most basic feature of a brand is the brand name, which is the unstylised text by which the brand is known. A good brand name can successfully cement a mental connection between the brand and the product. The mere mention of Cadbury’s, Kleenex and iPhone instantaneously conjures mental images of these well-known global brands and indicates the quality of the products they offer.
Creativity and out-of-the box thinking are needed to be able to choose a unique brand name that sticks. Sometimes, the most iconic brand names came to existence by accident (see Google). At the same time, one cannot discount the importance of data and market research in choosing a brand name. To select an effective brand name, these questions can serve as a guide.
- How well do you know your product? Will you be able to supply products of consistently high quality for your brand to acquire good reputation over time?
- Who is your target demographic? How do you want the public to see your product? Are there alternative markets for your product?
- Who are your competitors? What brand names and forms are they using?
- Do you intend to expand production or supply overseas? Does your brand name mean something else in different languages?
Therefore, in consideration of these questions, here are several guidelines in formulating your own brand.
- Choose a highly unique brand name. Consider self-coined terms or select unrelated words. The name Kodak was a coined word. The word apple has no correlation at all with computers, but at present, Apple is one of the biggest names in electronics and mobile phone technology.
- Short names run the risk of being attached to acronyms that may be damaging to the reputation of the brand. For example, brands that sounded like AIDS, SARS and especially ISIS experienced negative public response due to their inadvertent association with these acronyms that convey negative sentiments. .
- Conduct research to see whether your selected brand is substantially identical or deceptively similar to an existing mark and all its related domains and hashtags. This is important because the owner of the new brand can be charged with trade mark infringement. Moreover, when considering distribution or manufacturing the goods overseas, the brand, its translated versions and transliterations should not infringe on existing trade marks in that jurisdiction.
Finally, upon having settled on a brand name, the brand name should be registered as a trade mark under the corresponding classes in order for the brand to be protected for all the goods and services that are to be sold under that brand. A registered trade mark grants the owner protection and the right to enforce their mark against infringers and counterfeiters, as well as the right to license their brand to other parties.
Decide if you need to register a trade mark
A trade mark is a badge of origin that differentiates the products and services of your business from those of your competitors. Often a business name is selected with the intention to use the business name as a brand i.e. the business name is selected to be a badge of origin of goods or services sold by the business. However, merely registering a business name does not provide any enforceable rights. A competitor can copy your business name and sell similar goods and services under that name, taking away from the hard-earned reputation you have built in your business name.
Registering your carefully selected business name as a trade mark provides exclusive rights to use that trade mark within Australia in relation to the goods and services for which the mark is registered.
Similarly, the careful selection of a product or service name typically reflects a marketing strategy and trade mark protection will help ensure your marketing efforts are not diluted by a competitor selling a product or service under a similar name.
A trade mark can include a word or phrase, a logo, or less commonly:
Sometimes, a trade mark can be a combination of these elements.
Here are some guiding questions to consider when deciding to register a trade mark in Australia for trade mark protection:
- What aspects of the branding of your business function as badges of origin for your goods and services e.g. a name, logo, colour of logo, combination of elements?
- If you have decided to apply for a trade mark, does the word or logo make it clear that your product, service, organization or business originate from you, not from your competitors?
- Has a search been conducted to ensure that the trade mark you are considering is not a duplicate of or confusingly similar to somebody else’s trade mark?
- Will a public disclosure of the details of your trade mark application be an issue for you?
- Are you qualified to own the trade mark?
Baxter IP’s experienced trade mark attorneys are can help you consider and answer these questions. Please reach out if you have any questions.