Brand Name vs Trade Mark
Many business owners use the terms "brand name" and "trade mark" interchangeably, but they have distinct meanings and offer different levels of protection. Understanding the difference between a brand name and a trade mark is crucial for protecting your business identity and valuable intellectual property.
What is a brand name?
A brand name is text, in the form of words, letters or other characters, that functions as a name to differentiate a company or product from others. A brand name is how consumers can recognise a company and its goods or services, in the market. Companies may use brand names of different forms, such as their actual company or business name (Telstra), a product (Vegemite) or a product variant (Coke Zero), or a service (Uber Eats), among others. A well-known, recognisable brand name induces strong customer recall so that the target market will connect the company automatically to the goods or services on offer. The goal of a brand name is to build enough reputation so that the public would opt to avail of that brand's product instead of a generic kind.
What is a trade mark?
A trade mark is a type of intellectual property right that protects a brand. It is not necessarily a logo: it may be plain text, a slogan, a design aspect, a smell, a color or even sound. In a similar manner to a brand name, the purpose of a trade mark is to differentiate a product from others in the market, but a trade mark offers the owners protection that an unregistered brand name cannot. After application and upon approval by the Trade Marks Office, a trade mark is registered into the national register of trade marks. Trade mark registration awards the owner the right to seek legal relief against parties using a trade mark that is substantially identical or deceptively similar to the registered trade mark after the trade mark's priority date. This right may also deter potential infringers and counterfeiters.
One important difference between a brand name and a trade mark is the legislated enforcement option available for each. When left unprotected, a brand name that has acquired a good reputation may become a target of counterfeiters who attempt to benefit from the established goodwill toward the brand name by selling subpar counterfeit items or using their own confusingly similar brand that people may mistake for the original brand.
Unregistered brand names and logo marks can be protected by the common-law tort of passing off, but the proceedings may be costly and lengthy. In addition, expansion, outsourcing production or distribution to other countries may be out of the question as the lack of a registered trade mark may put the brand owner at risk of trade mark infringement allegations in other jurisdictions with a "first to file" rule, such as China.
By registering the brand name as a trade mark, the owner of the registered trade mark is automatically granted the right to seek legal relief in the country of registration against the unauthorised use of a confusingly similar mark. Thus, it makes good business sense to register the brand name and other possible trade marks that may be subjected to third-party infringement in order to protect the company's position in the market.
Key differences between brand names and trade marks
Legal protection
A brand name alone provides limited legal protection and relies primarily on common law rights through passing off actions. A registered trade mark, however, provides statutory protection and exclusive rights to use the mark in connection with specified goods and services.
Enforcement capabilities
Trade mark registration provides clearer enforcement mechanisms and stronger legal remedies compared to unregistered brand names. This includes the ability to take swift action against infringers and seek damages for unauthorised use.
Territorial scope
Brand names may have limited geographic recognition, while registered trade marks provide protection within the jurisdiction where they are registered. For international protection, trade marks can be registered in multiple countries or through international systems like the Madrid Protocol.
Duration and renewal
While brand names can be used indefinitely as long as the business operates, trade mark registrations have specific terms (typically 10 years in Australia) and must be renewed to maintain protection. However, trade marks can potentially last forever with proper renewal and continued use.
Why register your brand name as a trade mark?
Registering your brand name as a trade mark offers several compelling advantages:
- Exclusive rights: You gain the exclusive right to use the mark in connection with your goods and services
- Legal presumption: Registration creates a legal presumption of ownership and validity
- Deterrent effect: A registered trade mark often deters potential infringers
- Asset value: Registered trade marks can be valuable business assets that can be licensed, assigned, or used as security
- International expansion: Registered trade marks facilitate expansion into international markets
- Domain name protection: Can help in domain name disputes and cybersquatting cases
Making the right choice for your business
While every business has a brand name, not every brand name needs to be registered as a trade mark. The decision should consider factors such as:
- The uniqueness and distinctiveness of your brand name
- Your business expansion plans
- The competitive landscape in your industry
- Your budget for intellectual property protection
- The risk of brand confusion or infringement
Our experienced trade mark attorneys can help you evaluate whether trade mark registration is right for your business and guide you through the application process to ensure maximum protection for your valuable brand assets.
