Which Version of Your Brand Trade Mark should You File as Trade mark?

Barry Meskin
  • Barry Meskin - Principal, Patent & Trade Mark Attorney
  • Principal, Patent & Trade Mark Attorney "Providing commercially relevant patent & trade mark advice is of the utmost importance. Taking the time to understand how intellectual property will create revenue for a business ensures it is truly an investment in the business and not simply a box to be ticked.

Benefits of a registered Trade Mark

A registered trade mark provides proof of ownership for the registrant.  Without this, there is no proof of ownership for a business’ brand, and having this registered provides significant benefits. Such benefits include, amongst many others, the right to prevent others from using the brand, sue infringers for damages, deter competitors, show the brand as an asset on the company’s balance sheet, license the brand for royalties, and even sell the brand if desired.

Multiple Versions

When considering registration of a brand, thought must be given to which version of the brand to actually apply for.  Companies often have multiple variations of a brand, and the decision of which one to file as a trade mark requires consideration of your commercial strategy and may also depend on the state of the register at the time of filing.  Advice from an experienced trade mark attorney can be invaluable in making this decision.

Brands are typically used in multiple different ways, including in word marks, logos, taglines, and composite marks (having a number of different elements used together), along with variations in colour and black-and-white versions.  Given that very limited amendments can be made to an actual trade mark after filing, it is critical to get the trade mark correct at the time of filing as it determines the scope of protection that an application ultimately provides.

What to consider when determining which trade mark to file

Several aspects should be considered when deciding which trade mark to file. Some of the most important of these are discussed below.

  • Are there any potential conflicts already on the register? Which is the best trade mark to pursue in order to avoid a potential conflict?
  • Is your trade mark descriptive or suggestive? If so, it may be easier to achieve acceptance as a stylised logo.  If not, then you may obtain greater protection by filing a plain text word mark.
  • If you have multiple versions of your brand, which one will be the primary version that you will use the most and will be most prominent? It may be necessary to register all versions you intend to use as trade marks as it is common for product packaging to contain multiple trade marks that should each be registered separately.
  • Does your trade mark include colour, and is this important? If colour is an important part of your branding, you should consider filing colour and black and white versions to claim not only the specific colour of your branding but also any logo, irrespective of colour, that is part of your branding.
  • Do you intend to export to China (even in the long term)? If China could be an important market for you, it is important to consider filing Chinese versions of your brand not only in China but also in Australia as soon as possible.  China operates on a first-to-file trade mark system, and if your brand is registered by a third party before you apply, then they could block you from entering the market and using your own brand.
  • Do you want to export your products or services to any other countries? You should make sure to choose a trade mark that is compatible with local language and culture in those countries.  If it isn’t you may need to choose a new brand specifically for countries in which your current brand may be problematic.  Many countries also have specific requirements in relation to trade marks that you should take into account.
  • Have you allocated a budget for your investment? How much is available for registration of trade marks?  Ideally, you should seek as much protection as broadly as possible.  However, practically we all have some form of budget, and your filing strategy needs to take this into account.  You should seek to get the best protection for the money you have to invest without taking shortcuts that will leave your brand exposed.

Takeaway points

With all of the above in consideration, it is rare that a single trade mark application can cover all the elements of protection necessary.  This means protecting your brand completely may take multiple applications and may need to be staged.

Ideally, all of your trade marks should be filed and secured concurrently.  If this is not possible, start by filing the core elements of trade mark first and then subsequently filing applications for the additional parts of your brand.  Typically, this means filing a plain text word mark as your first step, and then logos, tag lines, and other elements thereafter.

The trade mark attorneys at Baxter IP have significant experience in providing strategic advice in relation to trade mark portfolios.  Our team can assist with the following:

  • Advice in the creation of your trade mark and brand strategy
  • Prosecution and registration
  • Maintenance
  • Enforcement
  • Dispute negotiation and resolution

Please contact us for a free, no-obligation consultation to see how we can help secure your brand.