Reading time: 6 minutes

Branding is a significant part of establishing and growing a business. In fact, business names or logos can become a business’s most valuable asset. When given the proper consideration, selecting a brand name and registering it as a trade mark can help you protect your business and provide you with further opportunities to expand your business. In this article, we look at the common mistakes entrepreneurs make when thinking about their brand and trade mark registration.

Why Register a Trade Mark?

Too often, unfortunately, trade marks are not at the forefront of a business owner’s mind. Founders are preoccupied with the costs to set up and run their business so that they neglect to protect their intellectual property. 

Although not a requirement for operating a business, registering a trade mark is an important safety measure that makes enforcement less costly. Early registration also mitigates the risk of another party trying to claim their own right to your trade mark. 

1. Choosing a Business Name That is Too Descriptive

One of the most important decisions a business owner makes is choosing their business name. Selecting a distinctive name is advantageous for two reasons: 

  1. it sets your business apart from other traders, and
  2. it makes your name more likely be registered as a trade mark.

The Trade Marks Act 1995 (the Act) requires that a trade mark is distinctive and capable of distinguishing its goods and services from that of other traders. A business name like Surry Hills Hair and Beauty would be too descriptive since it tells consumers exactly what the business does – hair and beauty in Surry Hills.

Your name can still convey the nature of your business, but be creative! An effective way to create a distinctive trade mark is through made up words, phrases or puns.

If your trade mark is not distinctive, it may also be difficult to enforce. For example, IP Australia would consider it unfair to stop another hairdresser from using the words ‘Surry Hills Hair and Beauty’ since it is likely that many beauty salons would need to use that phrase (or similar) to describe their services.

2. Not Checking the Trade Marks Register

A common misconception is that the Australian Business Register and the Trade Marks Register are the same register or at least reflect the same registrations. This is not the case. A business owner may register their name as an Australian business name but not as a trade mark, and vice versa. 

If a name is available on the Australian Business Register, you should also check the Trade Marks Register. In fact, business owners should view the trade marks register a priority since it is a registered trade mark that gives the owner an exclusive right to use the name (and the power to stop someone else from using it). In contrast, a registered business name does not give the owner a right to stop others from using the same name in relation to their business.

3. Checking the Trade Marks Register Only

Savvy business owners check the trade marks register to see whether a mark is available. This is certainly a good place to start, but don’t let your search stop here. Although registered trade marks receive greater protection, Australian common law also recognises unregistered trade marks and brand reputations. 

You should then also search sites like Facebook, Twitter, LinkedIn and YellowPages. Even basic Google searches will help you identify if any businesses are using similar names or logos in your area. Those businesses may not have registered a trade mark, but they may still hinder your own registration process.

4. Not Checking Whether the Business Name or Domain Name Were Available

Ideally, a business could register the trade mark, the business name and the domain name. As already explained, registering one does not give you an automatic right to the other. 

Check the availability of all three early and register as soon as possible before someone else takes the name you want. If someone registers your domain name, it can be quite costly for you to buy it from them.

5. Believing a Trade Mark Gives Exclusive Rights For All Goods and Services Worldwide

Another common misconception is that a trade mark gives the owner the right to use the mark exclusively without any limitations. Under the Act, the registered trade mark gives the owner the right to use the mark exclusively in relation to the goods or services under which they are registered, and the right extends to Australia only.

You will not be able to enforce your trade mark rights against a business that is operating in an industry that is vastly different to your own. Trade mark registration is a matter of national jurisdiction. So, you will need to file an application in the country you want protection.

6. Not Maintaining Your Trade Mark

Once your trade mark is registered, you must let others know that it is registered by using the ® sign next to the mark. In Australia, this is the symbol of a registered trade mark.

You must also use the trade mark in relation to the goods and services that you’ve registered your mark under. If you don’t do this, IP Australia could remove your trade mark from the register for not using the mark.

Remember that trade marks enjoy a registration period of 10 years. Every ten years you will need to pay a renewal fee to keep the registration. IP Australia uses the ‘Address for Service’ that you provide at the time of registration to send you reminders for renewal fees, so make sure this address is up to date.

7. Not Monitoring Your Trade Mark

Finally, trade mark owners often think that once their trade mark is registered, they can sit back and relax. But business owners need to keep an eye out for other businesses who may be using similar names or logos. If you are concerned that someone is infringing your trade mark, you should speak with an IP lawyer. 

Key Takeaways

Establish your trade mark and brand strategy early. Consider your business’ long term goals and objectives when brainstorming business names. It is worth spending the money early to protect your trade mark, business name and domain name to minimise the costs of defending any issues in the future. If you have questions, get in touch with LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page. 


Redundancies and Restructuring: Understanding Your Employer Obligations

Thursday 7 July | 11:00 - 11:45am

If you plan on making a role redundant, it is crucial that you understand your employer obligations. Our free webinar will explain.
Register Now

How to Sponsor Foreign Workers For Your Tech Business

Wednesday 13 July | 11:00 - 11:45am

Need web3 talent for your tech business? Consider sponsoring workers from overseas. Join our free webinar to learn more.
Register Now

Advertising 101: Social Media, Influencers and the Law

Thursday 21 July | 11:00 - 11:45am

Learn how to promote your business on social media without breaking the law. Register for our free webinar today.
Register Now

Structuring for Certainty in Uncertain Times

Tuesday 26 July | 12:00 - 12:45pm

Learn how to structure to weather storm and ensure you can take advantage of the “green shoots” opportunities arising on the other side of a recession.
Register Now

Playing for the Prize: How to Run Trade Promotions

Thursday 28 July | 11:00 - 11:45am

Running a promotion with a prize? Your business has specific trade promotion obligations. Join our free webinar to learn more.
Register Now

Web3 Essentials: Understanding SAFT Agreements

Tuesday 2 August | 11:00 - 11:45am

Learn how SAFT Agreements can help your Web3 business when raising capital. Register today for our free webinar.
Register Now

Understanding Your Annual Franchise Update Obligations

Wednesday 3 August | 11:00 - 11:45am

Franchisors must meet annual reporting obligations each October. Understand your legal requirements by registering for our free webinar today.
Register Now

Legal Essentials for Product Manufacturers

Thursday 11 August | 11:00 - 11:45am

As a product manufacturer, do you know your legal obligations if there is a product recall? Join our free webinar to learn more.
Register Now

About LegalVision: LegalVision is a commercial law firm that provides businesses with affordable and ongoing legal assistance through our industry-first membership.

By becoming a member, you'll have an experienced legal team ready to answer your questions, draft and review your contracts, and resolve your disputes. All the legal assistance your business needs, for a low monthly fee.

Learn more about our membership

Need Legal Help? Submit an Enquiry

If you would like to get in touch with our team and learn more about how our membership can help your business, fill out the form below.

Our Awards

  • 2020 Innovation Award 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Award 2020 Employer of Choice Winner – Australasian Lawyer
  • 2020 Financial Times Award 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year Award 2021 Law Firm of the Year - Australasian Law Awards
  • 2022 Law Firm of the Year Winner 2022 Law Firm of the Year - Australasian Law Awards