You need only think of McDonald’s golden arches to know that logos can make a business and brand instantly recognisable. This commercial reality applies as much to online businesses as to the traditional bricks and mortar varieties. What’s often misunderstood is that the process of registering a logo is different from registering your business name. This article explains how to register a logo as a trademark and why it differs from registering your business name.

Trade Marks

A trade mark is a sign used or sign used with the intention to distinguish the goods or services of one trader from another. Contrary to widespread belief, a trademark need not be a logo. It can be a word, phrase, letter, number, picture, an aspect of packaging or a combination of all of these.

A trademark is a form of intellectual property. It protects a logo (or another kind of mark) because once a business registers it as a trademark, other enterprises cannot use it for their commercial purposes.

The owner of a registered trademark has the exclusive right to use that mark for those goods and services for which they registered the mark in the first place. Another business could only use it with the proprietor’s express authorisation.

Consumers can only therefore only associate the mark with certain goods and services and a particular brand.  It enables a business to build a unique commercial identity.

Registering a Trade Mark

Registering a logo as a trademark is a five-step process. A person must:

  1. Decide if it has a trade mark;
  2. Have a clear understanding of goods and services;
  3. Conduct appropriate searches;
  4. Make an application; and
  5. Await the outcome

First, a person must be sure that they need a trademark and not another kind of intellectual property such as a design. If they applied for the wrong type of intellectual property, any monies spent are not recoverable. They must ensure that they meet the rules regarding eligibility. For example, an individual, company or unincorporated association can own a trademark. However, a person cannot apply using their registered business name.

Further, an application for a trade mark must specify those goods and services which the trade mark intends to, or will be used on.  There are forty-five different classes of goods and services. If a proprietor fails to identify all relevant classes for their logo, they cannot add to their application once it is submitted.

To specify the correct goods and services, it is possible to make a trademarks classification search online. Helpful questions to help classify your trade mark include:

  • What is the nature of your business?
  • From where do you derive your income?
  • What services and products do you provide?
  • What do your customers associate with your business?

After choosing the correct classes, an applicant must search to make sure that there are no similar trade marks either registered or pending. It is not merely a question of a trade mark being identical. Important issues to consider include:

  • Is the name or logo already in use?
  • Is it possible to protect the logo with a registered trademark?
  • Are there other, similar trademarks?
  • Will your logo infringe another person’s rights?

When conducting a search, an applicant can:

  • View trademark images; and
  • Search for Australian surnames.

Once a person finishes searching, they can apply for a registered trade mark online. They can either choose to use the pre-application service (TM Headstart) before making their official application or lodge their application at first instance. IP Australia publishes all lodged applications.

TM Headstart can assist an applicant to identify any potential problems before lodgement. It involves an additional cost but could save the need to pay a second application fee. The process is confidential, and no one can see the mark until a person files their application.  However, some applicants will be able to use the service as it does not extend to particular types of marks.

After lodgement, IP Australia examines the application. The process takes around three to four months.  If it is accepted, the proprietor will receive written notification.  IP Australia advertises the mark for two months, after which they register it.

If it is not accepted, an individual receives an adverse examination report. They then have fifteen months in total in which to register the mark. They need to respond to the report to enable another assessment. If an applicant runs out of time, they can apply for an extension to re-instate their application. That does involve a fee.

Registering a Business Name

Registering a trade mark is different from registering your business name. The two processes have distinct legal purposes and implications.

A business will operate using a business name. A proprietor must register it if they carry on business under a name other than their own. Unless they are exempt, this is a legal obligation. They will need to have an Australian Business Number or be in the process of getting one.

However, registering your business name does not legally protect it. A proprietor has no exclusive trading rights or ownership over that registered business name. Another proprietor can register and use a similar name without infringing any laws.  Also, the business cannot prevent a person who has registered that name as a trade mark from using it.

As a result, a registered business name does not enable a commercial enterprise to build a brand in the same way as a trade mark. The name will not uniquely identify their business. The only way to protect a business name is to register it as a trademark.

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If you have any further questions regarding the difference between trade marks and business names, LegalVision has provided many businesses with tailored online services including intellectual property matters. It would be our pleasure to assist you. Call LegalVision today on 1300 544 755 or contact us on this page.

Carole Hemingway

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