If you are considering whether you should invest in the trade mark process, you will need to decide whether to undertake it before or after launching your business. While there is no right answer to this, it is important to bear in mind that the average processing time for a trade mark is seven and a half months. Therefore, you will need to consider when undertaking the trade mark process will be right for your business. This article will explain some key considerations to help you decide when to register a trade mark for your new business.

What Can You Register as a Trade Mark?

A trade mark is a sign used to distinguish your business from other traders. The most common signs that new businesses want to register as a trade mark include their:

For example, some of the trade marks that Google owns include the:

  • word ‘Google’;
  • Google logo;
  • word ‘Chrome’;
  • Chrome logo; and
  • ‘The Web is What You Make of It’ slogan.

A registered trade mark gives you the exclusive right to use and license the trade mark. Therefore, you also have the power to stop someone else from using the same or similar mark. Other benefits of registering a trade mark include:

  • providing protection of your brand throughout Australia;
  • deterring competitors from misusing your brand;
  • creating an asset that can be licensed or sold; and
  • increasing the chances of success when enforcing your rights to the mark.

Who Will Own the Trade Mark?

Before applying for a trade mark, you should have set up your business structure and registered your Australian Business Number (ABN). Although it is possible to apply for a trade mark without an ABN, you will need to update the owner’s details once you have registered the ABN and transfer the trade mark.

For example, if you apply for a trade mark under your personal name, John Smith, and subsequently incorporate a company, John Smith Pty Ltd, you will need an assignment deed prepared to effectively transfer the trade mark and update the owner with IP Australia.

Have You Decided on a Business Name or Logo?

The two most common signs that a new business may want to register as a trade mark are a business name and logo. Before applying for a trade mark, you should ensure that you have chosen a business name and designed a logo that you are happy with. This is particularly important as you will not be able to amend your trade mark once it is registered. Rather, you will need to submit a new application form.

Before choosing a business name or logo, you should ensure that it:

  1. distinguishes your goods or services from those of other traders; and
  2. is not identical or similar to an existing trade mark concerning the same goods or services.

For example, if you own an ice cream shop and want to register a trade mark for your business name ‘Cold N Creamy’, this may be seen as descriptive of your services and may be difficult to register. Similarly, if you want to register a logo that contains an image of a generic ice cream cone, this may be difficult to register as other businesses may need to use the same image.

We also recommend searching the IP Australia Trade Mark Database to see whether your chosen mark is available and would not be infringing on someone else’s trade mark rights.

What Products or Services Will You Be Providing?

Before applying for a trade mark, you should have a good idea of what products you will be selling or what services you will be providing. This is because, when applying for a trade mark, you will need to choose the goods and services that your mark relates to. This list of goods and services are divided into 45 ‘classes’ that can you can search for on the IP Australia’s Trade Marks Classification Search.

For example, if you are starting a clothing brand, you may need to consider:

  • what clothing items you plan to sell. For example, t-shirts, shorts, gym wear, running shoes, and hats fall under class 25;
  • if you plan to sell clothing accessories. For example, jewellery and watches fall under class 14, whereas sunglasses fall under class 9; and
  • if you plan to sell your own branded clothing or other branded clothing. For example, retail services fall under class 35.

However, it can be difficult to predict how your business’ line of products or services will develop in the future. If you want to add goods or services after your trade mark is registered, you will need to submit a new application.

For example, you started a floristry and registered your mark under class 31 (i.e. fresh flowers). However, a few months later you decide to introduce flower delivery. Therefore, you must submit a new application for the same mark under the new class (i.e. class 39 for flower delivery).

How Will You Market and Sell Your Products or Services?

You will need to consider how you intend to use your proposed mark.

For example, you may decide to display your business name or logo on your:

  • website;
  • social media pages;
  • product packaging;
  • invoices; or
  • shopfront.

This is important to consider because if you do not use your trade mark consistently, you may risk losing trade mark protection.

What Are Your Plans for Growth?

While it may be difficult to think about long-term plans when starting your business, you may want to consider what your plans are for growing the business.

However, starting the trade mark process early on will be very beneficial if you plan to:

  • sell your products in major retail stores;
  • open several stores across Australia; or
  • raise capital with professional investors.

Do You Have Any Concerns About Using Your Mark?

If you have any concerns about how your mark is being used, then you may want to register a trade mark early on.

For example, you may know that a competitor is using a similar mark to you, but has not yet registered it. Therefore, applying for a trade mark will give you a stronger leg to stand on if you decide to take action against the competitor.

If a competitor applies for their mark first, then they will receive a priority date. This means that they will receive preference over any subsequent applications. Therefore, you may have to legally defend your brand and spend money on opposing their trade mark application.

Key Takeaways

There is no one rule on whether you should register your trade mark before or after launching your business. Instead, it will depend on how important brand protection is to you. Some of the key factors that you will need to consider to help you decide include whether you:

  • have a business entity in place that will own the trade mark;
  • have a chosen a business name and logo;
  • know which products or services you will be providing;
  • know how you will market and sell your products or services;
  • have plans to grow your business; and
  • have any concerns about competitors using your mark.

If you have any questions about when to register your trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Graci Chen
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