Why Do I Need To Register a Trade Mark?

As your business becomes profitable, your brand’s value grows. After investing your finances and creativity into building a recognised brand, you’re now starting to stand apart in the market. However, you don’t want competitors copying your brand’s distinguishing features. Registering a trade mark can give legal protection to the components that make up your brand – names, logos, taglines, colours and packaging.

This article explains why registering a trade mark is important, how you can best use one and how to complete the registration process.

The Advantages of Registering a Trade Mark

The advantages of registering a trade mark grow as you use it. At first you’ll receive legal rights to the trade mark. However, as your business grows, your trade mark becomes more valuable the more you use it.

It’s important to understand that a registered trade mark offers different protection and serves a different purpose to a registered business name. A business name does not give its owner the exclusive right to use the name – in the absence of a trade mark, competitors can still use a similar name. Conversely, a trade mark owner has the right to monetise their brand and give others permission to use it. They also have the right to prevent competitors from using a similar name or mark.

So how do you make the most of your trade mark?

Use Your Trade Mark Appropriately

Use the ® symbol on your website, social media pages and on products or services in the upper right corner. This lets others know that your trade mark is registered.

Use your trade mark in the form that it is registered. For maximum protection you need to use the trade mark in the exact form it is registered, or consider registering each variation that you use.

Monitor and Defend Your Trade Mark

You’ll need to be vigilant for potential infringements of your registered trade mark or similar brands that may dilute your presence.

Put an end to infringement quickly by sending a Cease & Desist Letter. The more opportunity competitors have to building their presence in the market with similar trade marks, the more difficult it is for you to enforce your right and the more diluted your own trade mark becomes.

Commercialise Your Trade Mark Through Licensing

As your business grows, your reputation will make your trade mark more valuable. A trade mark attached to a business with a good reputation will attract the attention of other business owners who may also want to share association with your business.

You can give other business owners permission to use your trade mark in certain circumstances through a licence. This allows you to retain ownership and maintain control over the brand, but expand your market. Licences to use trade marks can come in the form of business models like franchise, reseller or agency relationships.

Don’t underestimate the power of goodwill in branding and trade mark commercialisation. The trade mark of a business with a poor reputation will not have much value.

When to Start Registering a Trade Mark

In Australia, trade mark registration is in principle obtained on a first-to-file basis. This means the earlier you file for trade mark registration, the safer. Pragmatically, however, this may not always be an option.

For smaller companies that are still building their reputation and revenue, it is worth weighing up the cost of trade marks registration against project revenue profit. It is very common for new business owners to test the waters before committing to their brand and starting the registration process. You can, while the business is still starting out, take other measures to prevent infringers of your intended trade mark until you do register it. Many business owners use ™ next to their trade marks do indicate their intention to use the symbol as a trade mark. Though it is not a registered right, the ™ symbol acts as a deterrent.

The Application Process

First, research your industry to ensure you are not infringing on anyone else’s intellectual property, and to make sure your idea is different and unique enough to be registered.

Successful registration takes a minimum of seven and a half months, and is renewable annually. There are about 150 examiners processing trade mark applications at IP Australia, and in 2016, IP Australia received 71,344 applications for trade marks.

IP Australia may reject your application for several reasons. Therefore, when you are choosing your trade mark, you should ensure that:

• it does not contain a sign that is not able to be registered under the Commonwealth (for example, the Australian flag);
• the trade mark can be represented graphically (for example, you cannot trade mark musical notes);
• it does not contain anything scandalous or contrary to law;
• it is unlikely to deceive or cause confusion;
• the trade mark is capable of distinguishing your business; and
• the trade mark is not identical or deceptively similar to a pending or registered trade mark.

However, it is not necessarily a problem if your trade mark is similar to one in another industry. For example, there are trade marks for Dove chocolates as well as for Dove beauty products. The two trade marks are unlikely to confuse anyone, since chocolates are very different to beauty products.

Once IP Australia approves the application, the details are published for an advertisement period of roughly five months. Other people can challenge your trade mark within this period. For example, on the grounds that they already have a registered trade mark very similar to yours. If no one challenges, or no challenges are successful, you’ll then be granted a registered trade mark.

Key Takeaways

Registering a trade mark gives you a valuable tool to protect your brand. As your business grows, your trade mark will also increase in value, distinguishing your business in the market.

If you need help with the trade mark application process, call LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.