We are regularly contacted by businesses when they discover that a competitor is using very similar branding, business name or logos. This is extremely frustrating to the business which has put considerable hard work into creating their unique branding and has built goodwill and a market reputation based on that branding. This article discusses five key steps that you can do to help protect your business brand against competitors.
1. Choose a Unique Name
It will be easier to establish your unique reputation, build brand awareness, and to protect your brand goodwill if you choose a unique business name.
Conduct detailed searches to check that there are no similar trade marks being used in Australia and any international countries where you want to do business. Check that your proposed trade mark is not the same as or similar to a trade mark with registration pending or that has been registered in the same areas (classes) that you want to register in.
It is also useful to search Google and check for the trade mark in Australian and overseas. Many international businesses register trade marks with IP Australia and vigorously defend their trade marks in Australia.
2. Register your Business Name with ASIC
If you do business with anything other than your name (or your partner’s) name, you need to register your business name with ASIC. This gives you the legal right to do business under this name. It does not give you rights to stop others from using a similar name in a similar area/class.
You can register a business name at business.gov.au. It is cheap and easy to register a business name; the cost is $34 for one year or $80 for three years. We can assist you if you like.
3. Use a Copyright or Trade Mark Notice
Copyright: You can add a copyright notice to your unique work, for example, your content, images, reports, website and social media pages. For example: © Copyright 2016 LegalVision Pty. Ltd.
You have automatic copyright protection under the Copyright Act 1968 (Cth), for your original work. The Copyright Act protects original literary, dramatic, musical and artistic works. To have copyright in a work, you must be a resident or citizen of Australia and the work was made or first published in Australia (or has a specified connection with a country which is a member of a relevant international copyright treaty).
A copyright notice does not give you rights, the rights are automatic. Your copyright notice tells the world who owns the rights. For example, if you own a drink bottle, you are the legal owner. Writing your name on the drink bottle does not give you ownership rights, it just tells the world how owns the drink bottle. If you have a copyright notice on your work, it is less plausible for a competitor to say they did not know it was your work.
Trade Mark: You can use the ™ symbol immediately next to your brand/trade mark even if your trade mark is not yet registered with IP Australia. Using a ™ symbol next to your trade mark shows the world that you are using the logo, name or other sign as a trade mark, to distinguish your goods and services from those of others.
A trade mark is any sign that you use to distinguish your products and/or services from those of other people. Your trade mark can be a name, slogan, logo, image, colour, shape, scent, sound, or a combination of these things. Trade marks are usually names or logos.
4. Register your Trade Mark with IP Australia
Registering your trade mark with IP Australia gives you rights to use that mark, in the classes you have registered, from the date of registration. You can also prevent others from using your trade mark in the classes you have registered.
Once your trade mark is registered, you can use the ® symbol immediately next to your brand. This shows the world that you have registered trade mark. If your trade mark is registered overseas but not in Australia, you can use the ®symbol and you need to show the country of registration close to it.
5. Defend your Trade Marks
This includes doing regular searches and sending cease and desist letters. You can monitor other’s use of your trade marks by conducting regular searches for your trade marks and variations on your trade marks. LegalVision can also do detailed searched for you.
What happens if you find a competitor using your trade marks? One step is to send a cease and desist letter to ask that they stop using similar trade marks.
A cease and desist letter includes:
- What trade marks you use, where you use them and from what dates including registration classes and dates if relevant.
- The fact that you have established reputation and goodwill in the trade mark.
- A request for the person or business to cease using the copy-cat or similar trade mark immediately.
If relevant, a cease and desist letter can include discussion of passing off and misleading or deceptive conduct.
Passing off: Passing off gives your business rights and solutions, if the conduct of another business damages your reputation or goodwill, by causing potential customers to associate a competitor’s product, service or business with your business, where there is no such connection.
For example, if two doctors had practices in neighbouring suburbs, with similar practice names and tag-lines, clients may inadvertently book with one doctor when they meant to book with the other doctor.
Misleading or deceptive conduct: Businesses are prohibited from engaging in conduct that is misleading or deceptive or is likely to mislead or deceive, under the Australian Consumer Law (Section 18 of the Australian Consumer Law, set out in Schedule 2 of the Competition and Consumer Act 2010 (Cth)).
Whether copy-cat behaviour is misleading or deceptive, depends on factors including whether the conduct is misleading or deceptive looking at all the surrounding facts and circumstances. Conduct is considered to be misleading or deceptive if it leads a person (e.g., a potential client) into error. It is irrelevant whether the copy-cat business intended to mislead anyone.
Your cease and desist letter can request that the copy-cat business changes their business name, logo and any other copy-cat material. If necessary, you can seek a public retraction and clarification. If relevant, you can seek payment, for example, if you can establish that you lost business and the copy-cat competitor gained business from using copy-cat trade marks.
How to Protect Your Business Brand Now
It is cheap and easy to register your business name with ASIC and it is free to add your copyright notice © to your copyright work and your trademark notice ™ to your trade marks. It is prudent to consider registering your trade marks with IP Australia as this generally provides clearer, broader and stronger protection than using unregistered trademarks.
You can then conduct your own searches to look for copy-cat competitors. You can send your own cease and desist letters, or engage a business lawyer to prepare comprehensive cease and desist letters that set out your side strongly. Questions? Call us on 1300 544 755 or get in touch on this page.
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