In Short
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Registering a trade mark protects your brand long-term but requires planning and effort.
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Your trade mark must be distinctive, not too descriptive or generic.
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Conduct market research and classify your mark before applying.
Tips for Businesses
Before applying for a trade mark, make sure your brand is distinctive and clear. Check for existing marks to avoid conflicts and identify the right class of goods or services. If you’re unsure about the process or classifications, seek legal advice to help with your application.
Registering a trade mark is an effective way to protect your growing brand. However, not every brand name, logo or slogan is ready to be registered. You may be thinking of applying for a trade mark but are not sure if it is the right thing for you. If so, this article sets out some key points to consider when deciding whether to register a trade mark.
Are You Ready to Register?
Registering a trade mark is not just a one-step process; it involves protecting the trade mark long term. If you are interested in registering and using a business name but have not done the work required to protect your brand and are not prepared for setbacks, registering a trade mark might not be the right option for you.
You will need to have a clear vision of the direction of your business in mind. Once you have planned for the future and created a strong foundation for your business, your trade mark will be able to clearly distinguish your brand within the market. You will also need to be ready to apply the effort necessary to maintain your trade mark. This involves:
- paying for renewal;
- registering other marks that become associated with your brand; and
- legally pursuing potentially conflicting marks or brands.
If the process sounds too difficult, applying for a trade mark may not be the right option for you.
Are You Going to Use the Mark?
You do not have to be an established business to register a trade mark. You do not even have to be selling your product yet. Many startups protect their business name from copycats before they launch to the market.
However, IP Australia does require that the owner of a trade mark is a company or individual who uses, or intends to use, the trade mark in a way that specifically relates to the products or services detailed in your application.
Continue reading this article below the formIs Your Mark Distinctive?
Your trade mark will be used to distinguish your product from the competition. If it is too descriptive or too generic and does not differentiate from other brands in the market, it will not be accepted by IP Australia.
Creating a distinctive trade mark can be difficult, but there are strategies you can use to make your mark unique.
It is wise to avoid commonly used descriptive terms, or words and signs that might be confused with existing brands. Issues may arise when the trade mark:
- is too descriptive (e.g. ‘Sam’s Plumbing’);
- includes geographical locations (e.g. ‘Sydney Plumbing’);
- uses numbers; (e.g. Plumbing 123)
- is a short acronym; (e.g. Plumb) or
- is a common surname (e.g. Smith’s Plumbing).
Have You Classified Your Mark?
Before you register your mark, you will need to identify the class of goods or services that your brand relates to. On the IP Australia register, trade marks are registered under one of 45 classes of goods and services.
It is possible that your business may supply a product that is covered by multiple classes. In that case, you can either register in the relevant classes or pick a limited number that you would prefer your brand to be associated with over others. If you are uncertain on the direction of your brand and therefore cannot decide on the classifications of your trade mark, then a trade mark might not be the right option for you.
Check the Competition
Next, you will need to do some market research. Is anyone else using this trade mark? Is your trade mark distinctive enough to distinguish your product from others in the market? To check this, it is a good idea to search the IP Australia Trade Mark Database and the Trade Mark Image Viewer in addition to your normal Google search.
You should look for marks that may be fairly similar to your brand, not just those that are completely identical. Begin your search with the businesses and brands that are within your industry and expand from there.
If your proposed idea is already in use, then you will need to rethink your name or logo. You could come up with a new trade mark that is distinctive based on what you know of about the competition from your search. Or, you might decide at that point that registration is not the right option for you.
Key Takeaways
Taking a bit of extra time to consider your brand name, logo or slogan before registration is a great way to figure out if registering a trade mark is right for your business.
If you have planned out your brand and developed a unique name and logo, then you have taken the first steps. Once you have scouted the competition and classified your mark, you are well placed to get started with your application.
If you have any trade mark questions, our 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
Are you ready to register a trade mark?
Registering a trade mark is a long-term commitment. It involves not only the application process but also maintaining the trade mark through renewals, registering associated marks, and pursuing conflicting brands.
Do you need to be established to register a trade mark?
No, you do not have to be an established business or selling a product yet. Startups often register their business name to prevent copycats before launching to the market. However, IP Australia requires that you intend to use the mark in connection with the products or services in your application.
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