Many e-commerce companies choose to undergo the trade mark registration process for several reasons. However, trade mark registration is optional and not a requirement to conduct e-commerce. Namely, trade mark registration gives companies the exclusive right to use their trade marks. In this sense, if another company decides to trade using your distinctive signs or symbols, you have more excellent legal avenues available to prevent the misuse of your intellectual property. This article explains the benefits of trade mark registration for your e-commerce business and the trade mark registration process.
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Benefits of Trade Mark Registration
It is optional to register a trade mark for your e-commerce business. Although, there are some invaluable benefits you can gain from trade mark registration. These benefits can be both legal and non-legal benefits.
Legal Benefits
If you successfully register your trade mark with IP Australia, you gain the exclusive right to use your trade mark. This means you become the sole user of your business name, logo or slogan when marketing and selling your goods and services. In addition, in the event that another e-commerce company uses an identical or similar sign in the course of trade, you may have the means to prevent them from infringing on your intellectual property rights.
In addition to the right to use your trade mark, trade mark registration gives you the right to authorise others to use your trade mark. Many e-commerce businesses reap the financial benefits of licensing schemes that allow them to license their trade marks to other e-commerce businesses. In addition, the right to authorise the use of a trade mark becomes crucial if you eventually set up a physical store and want to franchise your business.
Finally, trade mark registration gives you the right to take action against infringement. If you use a trade mark without registering it, you have limited legal action available to prevent others from copying your business:
- name;
- logo; or
- slogan.
For this reason, trade mark registration can become a critical tool when protecting your business’s intellectual property.
Non-Legal Benefits
Some additional non-legal benefits of trade mark registration will provide value to your e-commerce business. Namely, a registered trade mark allows you to develop a distinctive online presence by using your business name, logo or slogan. In addition, since you gain the exclusive right to use your business’ distinctive brand features, you have a defence to trade mark infringement if another party alleges that your trade mark is similar to theirs.
In addition, a registered trade mark is a valuable asset that can open your e-commerce business to additional income streams. This is because you can reap the benefits of licensing your trade mark. Additionally, you might eventually sell your trade mark along with the goodwill attached to your brand.
Lastly, having a portfolio of registered trade marks can amplify your brand and its professional image.
How To Register A Trade Mark
You must apply with IP Australia to register a trade mark in Australia. However, you should note that registration is not guaranteed. Instead, IP Australia will only register your application if it meets specific legislative criteria.
Identify Your Intellectual Property
A trade mark must distinguish your business’s goods and services from others in the market. For this reason, IP Australia might reject your application if your trade mark is:
- generic;
- descriptive; or
- lacking a distinctive quality.
In addition, IP Australia can reject your trade mark application if it is:
- misleading;
- offensive;
- descriptive or a commonly used description; or
- merely laudatory.
In any event, a trade mark lawyer can help you decide whether your trade mark is fit for registration and help you complete the appropriate registration process.
Classify Your Trade Mark
When you apply to register a trade mark, you must select which goods and services you want your trade mark to protect. For this reason, you should search the Trade Mark Classification Search. The search classifies common goods and services into 45 classes.
When deciding which trade mark classes to include in your application, you should consider:
- the nature of your goods and services;
- how your e-commerce business generates income; and
- how customers recognise your e-commerce business.
While you may be tempted to include every applicable class in your application, this is both unnecessary and costly. Instead, you should only include the classes that are relevant to protecting your e-commerce business.
Conduct a Trade Mark Search
If someone has already registered your business name or logo as a trade mark, this can prevent you from registering and continuing to use your trade mark. For this reason, you should search the Australian Trade Marks Search for any registered trade mark that is identical or similar to your trade mark.
File Your Application
Once you have completed the steps above, you can file your trade mark application via IP Australia’s online services platform. Again, you can use a standard trade mark application or a Headstart application.
Unlike a standard application, a Headstart application includes a pre-filing assessment of your trade mark application before formally filing it for IP Australia’s review. This allows you to amend or discontinue your application if you do not receive a favourable pre-filing assessment. However, since both applications involve different processes, their fees will ultimately differ.
Continue reading this article below the formKey Takeaways
While registering a trade mark is not necessary to conduct e-commerce, trade mark registration can significantly benefit your business. Namely, trade mark registration gives you the exclusive right to:
- use your trade mark, allowing you to amplify your brand image and its legitimacy;
- authorise others to use your trade mark, opening your e-commerce business to additional income streams though licensing; and
- take action against infringement, allowing you to develop a distinctive online presence without other businesses using similar or identical signs.
If you have further questions about registering a trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A trade mark is a sign you use to distinguish your business’s goods and services from those of another business.
Under the Trade Marks Act, a registered trade mark is protected for ten years from its filing date with the option to renew registration in perpetuity.
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