Looking to trademark a name? Under Australian trademark law, the owners of registered trademarks are entitled to certain rights to use and protect their valuable trademarks. As a business grows and develops a strong reputation in the marketplace, the need for trademark registration becomes more obvious. A registered trademark will increase in value as the business increases in value. When you trademark a name, you prevent other traders from registering that name as a trademark for the goods/services over which you wish to have exclusive use of the trademark. You would also trademark a name if you wanted to protect its use from overseas competitors that attempt to import goods with the same or very similar marks. Keep in mind that trademark registration can only be achieved through IP Australia.

Why trademark a name?

There are many reasons why a trader would trademark a name. These include:

  • The Right to Exclusive Use – Depending on the goods/services for which you register your trademark, you will have an exclusive right to use the mark in Australia. Prior to submitting your application for trademark registration, it is important that you conduct a search on the trademark register to check whether any potential conflicts may arise with previously registered trademarks. Your business name must not be identical or too similar to another registered trademark. To achieve trademark registration, your name must be distinctive and new. When you trademark a name, you arm yourself with the ability to stop other applicants from being able to register names that are confusingly similar or identical. Part of owning a trademark is being able to stop others from using an identical or similar trademark, whether register or not, for the same or similar goods.
  • Added protection – Defending and protecting your brand is much easier when you trademark a name. Trademark registration allows owners to take legal action against infringing users. The most common form of infringement occurs when traders try to use unregistered trademarks that are confusingly similar and trade in goods/services that are the same or related. ASIC registration assists in preventing other businesses in a particular area from using the same name for their business, though fails in stopping these businesses from using similar/related names.
  • Value of brand and goodwill – Upon getting trademark registration for your name, you will be entitled to use the ® symbol in advertising your exclusive rights. When other traders see this symbol, it alerts them to the fact that you have exclusive intellectual property rights to the mark and that you are not afraid to enforce them. Another benefit of using the trademark symbol is that it suggests professionalism, reliability, and an established reputation in the marketplace. Consumers acknowledge that your business has gone to the trouble of registering your trademarks to safeguard your business’ goodwill against the competition. Remember that the ® is only for registered trademarks, whereas the ™ is for trademarks that the trader intends to register. Do not misuse these symbols if you wish to avoid facing civil penalties.
  • A more valuable business – As you know, a registered trademark is a saleable, licensable and assignable asset. Your business can benefit from the reputation that your registered trademarks afford your business. Your business longevity will also benefit as you develop a loyal customer base. The cycle goes: Register a trademark, establish a reputation in the market, build loyal clientele, and expand your business’ lifespan.
  • Increased income stream – Once your trademark is registered, you are allowed to give others the right to use your trademark (for example, in franchise networks), provided it is for specific goods/services. When you licence your registered trademarks to other traders, you can control how the marks are used. In addition, you can charge licensing fees (royalties) if other traders wish to use the mark. Trademark registration lets you manage how, by whom, where, when and for what purpose your trademark is being used. This means you can generate income for as long as you have a registered trademark. Initial registration is for a 10-year period in Australia, but upon paying renewal fees, the trademark can be maintained indefinitely.

Do I need to trademark a name to gain protection?

Trademark registration is optional, whereas registering a business name is a legal requirement. That said, trademark registration is not necessary to receive protection for the use of the trademark. Protection is available under common law or the Competition and Consumer Act 2012. That said, it is costly and complex to enforce these protections if your trademarks are unregistered.

Again, using the unregistered trademark as a business name is completely legal. For example, although the ™ symbol puts other traders on notice of your intention to register, it does not provide any additional rights.

Conclusion

If you wish to be able to protect your business name against other traders to the greatest extent possible under the law, you should consider trademarking the name. If you are looking at trademarking a name, and would like to discuss the specifics with a trademark lawyer, contact LegalVision on 1300 544 755 today.

Lachlan McKnight

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