What is a Trade mark?
A trade mark is used to distinguish goods or services from those provided by any other person and allows customers to easily identify your goods or services. Trade marks are an effective marketing tool to advertise your product and provide a unique and recognisable identifier in the marketplace.
Trade marks can be formed by using or combining signs such as words, numbers, names, brands, colour, shape, images, smells or sounds. A trade mark is the only way to formally own a unique name or sign that distinguishes your products in the market and upon registration you will receive a formal Certificate of Registration of Trade Mark to prove ownership. This gives you the sole right to use and enjoy the trade mark in the country of registration.
Where do I start?
Commonly, the name of a company or product is chosen at the last minute when an accountant asks what you intend to call your company or the name you need for printing packaging or the like. It’s easy to fall into the trap of picking a descriptive name thinking this will tell clients what you do and make you easier to find. The downside to this is that you fall into the bucket with hundreds of other descriptive names chosen by your competitors. This means your name is ultimately not unique but generic and you risk trying to differentiate yourself based on price only.
The starting point to choose a good trade mark, a name that you can actually own, is to choose a name or sign that is not generic or descriptive for your goods or services. Made up words make great trade marks precisely because they do not directly describe the goods and services you sell.
Think about the Telstra™ trade mark. We know they provide telephone services, but we know that because their marketing and branding has embedded that into us. Looking at the name Telstra™ without your existing knowledge does not provide much insight into the services they provide. An international tourist for example who is not aware of the brand is unlikely to know what they do without being told. This may seem counter intuitive, but who do you think will make the more profitable customer? Someone who values your brand as a premium provider and is willing to pay a higher price for a better service long term service or a traveller looking for a budget solution for a one week stay in Australia and will never use your service again.
I know which client I want and the way to build that brand premium is by choosing a good trade mark. To do that don’t pick a name that is descriptive or generic.
If you aren’t sure whether your name is descriptive or generic, speak to us and we can perform registrabililty search and report to advise you whether the name is likely to be accepted for registration.
My Trade mark is distinctive and unique, what is the next step?
If your trade mark is distinctive and unique, the next step is to file a trade mark application. Filing a trade mark application secures the date from which a trade mark is enforceable once registered. Your trade mark attorney will work with you to correctly identify the goods and services that should be included your trade mark application. The trade mark application process takes about 7 months in straightforward cases so it is important to file the application as soon as possible to ensure the earliest possible grant date. Once your trade mark has granted, it can be enforced.
Does my Trade Mark protect me outside Australia?
Trade mark registrations in Australia only protect you in Australia. If you want protection for your trade mark overseas you will need to file an application in each country of commercial interest. It’s important to have a filing strategy in place for commercial expansion as having someone register your trade mark overseas before you get there can be problematic. Our attorneys can help by preparing a filing strategy to support your international business.
What if I decide not to register my Trade mark?
If you choose not to register your trade mark you are leaving your name open to be used by others as you have a very limited ability to stop them. Only registering your trade mark provides proof of ownership and the ability to more easily stop others from using the name.
Why should I use Baxter IP?
Ultimately, only a small number of “do-it-yourself” applications are successful. Most are abandoned due to insufficient knowledge of the application process or requirements. Inexperience in preparing trade mark applications can incur unnecessary time and cost on compliance requirements and professional advice is essential for a positive outcome.
Should someone oppose to your trade mark application, this may be difficult to defend as it can involve complex legal issues and points of law.
Even if the trade mark is successfully registered there may be significant flaws in the application that would prevent you from successfully using the registration to enforce your brand. These often only come to light when you seek professional advice when you wish to take action against an infringer. The following are examples of the types of deficiencies from incorrectly filed applications:
- the scope of registration may be too narrow meaning the registration does not provide adequate protection for your core goods and/or services;
- the scope of registration may be too broad leaving your trade mark open to a non-use removal action or open to be removed as a bad faith application;
- or the goods and/or services chosen may not be correctly identified;
- the incorrect trade mark may have been registered; and
- you may have failed to separately register important components of the trade mark.
Without professional advice from the outset you may find you do not have the appropriate statutory rights required and your ability to enforce your trade mark can be severely limited or non-existent.
Baxter IP has extensive expertise and experience in the area of trade mark law and our trade mark attorneys have successfully registered hundreds of trade marks for our clients. Please contact us for a free and confidential no obligation consultation to discuss your trade mark needs.