Choosing a brand is crucial to a successful business strategy. A brand is a design, symbol, word or combination of these that differentiates your brand from competitors. It provides value to your business and simplifies purchasing decisions for consumers. Once your brand is developed, it is important to protect your brand with a trade mark registration. If you are thinking about protecting your brand, you may be wondering what makes a good trade mark. This article will explore what:

  • makes a good trade mark; and 
  • requirements a trade mark must meet to achieve registration in Australia. 

What Aspects of Your Brand Can You Protect With Trade Mark Registration?

A Brand Name

It is best practice to protect your brand name, both in plain text and stylised the way you use it (For example, in the colour, font or shape you use. An example of this is the name ‘H&M’ and the stylised ‘H&M’, displayed in a cursive red font.

A Slogan

Protecting your businesses’ slogan or tagline adds a level of sophistication to your business and ensures your business can exclusively use your tagline. Famous slogans recognised worldwide include, ‘I’m Lovin’ It’ and ‘Just Do It’.

A Motif

Using a motif across your business is a great way to create a connection with your clients and visually show them what your brand is about. Motifs can be used across your business, on products or on branding collateral.

A Combined Logo

It is best practice to protect your motif and brand name if they are being used together. Both elements are recognisable and crucial to the brand.

An Idea

It is difficult to protect an idea when it is not written down or expressed. If you are considering protecting an idea, write it down.

A Descriptive Term for a Geographical Location or a Common Last Name

Protecting generic terms with a trade mark can be difficult. If your brand or business name is too generic, you may struggle to register your trade mark.  If your business name is generic, consider protecting a combined logo.

Third Party Material

If you use material that you did not create and do not have legal rights to, it is unlikely you will  be able to protect it with a trade mark.

A hashtag

Hashtags can incorporate a brand name, tagline, movement or marketing campaign. If your tagline includes your trade mark or an element of your business branding that is used as a sign, you may be able to protect it with a trade mark.

Your Domain Name

A domain name secures your URL so that no other business has the same address.  However, this does not provide enforcement protection. It is a good idea to protect your URL with a trade mark. If you use your domain name as a sign for your business, you may also like to protect this with trade mark registration.

How Do I Start A Trade Mark Application?

When starting your application, there are questions you can ask to identify which trade mark will provide the appropriate legal protection for you. For example, you should consider:

  • whether what you are seeking to protect is a trade mark (i.e. is it used as a sign to identify your business or brand?);
  • what goods or services apply (trade mark applications are made in connection with the goods or services you provide or sell);
  • what you will use your trade mark in connection with (i.e. McDonald’s is a fast food restaurant and Woolworths is a supermarket and retailer);.
  • who owns the trade mark (i.e.this must be a person or legal entity);
  • is it registrable (i.e. are there any anticipated issues and is the trade mark contentious?);
  • whether you can demonstrate use or an intention to use in good faith( i.e. will you commence use of your trade mark in the future?); and  
  • where you will operate (i.e. in Australia or internationally?).

What Makes a Good Trade Mark?

Made Up or Invented Words

Some famous brands have made up words in their names. The classic example is Kodak. As an invented word, Kodak has no dictionary meaning. Adopting a new word is the best strategy for a good trade mark, because it offers the broadest and most easily enforced form of protection. As Kodak shows, an invented word can sound good, be memorable and form a good basis for a strong reputation.

Unrelated Words

Another approach is to choose words that are completely unrelated to your business. For example, consider Apple for computers or Mongoose for bicycles. Both words are memorable, instantly recognisable and, most importantly, protectable brands. However, registering a trade mark containing commonly used words will not prevent others from using those words to describe other goods or services.

Unique Names

As a general rule, IP Australia considers a name that occurs more than 750 times on the Australian electoral roll, sufficiently common to warrant rejection of a trademark application. However, if the goods or services are sufficiently specialised (for example, helicopter design services), the threshold of ‘commonness’ may be higher.

What Brand Names Should I Avoid?

Suggestive Names

This category includes names that are suggestive of the goods or services being sold, while not being entirely descriptive. While these trade marks will not always be refused, you will need to consider whether other traders selling similar products are likely to want to use those words in that combination to sell their own products.

Merely Descriptive Marks

Descriptive words may be statements about the quality of the products (for example, Fresh Donuts), their location or geographic origin (for example Sydney Lawyers), or just generic terms used for those products (for example, Clock for timekeeping devices). In cases where your trademark does nothing more than describe your products, it may be difficult to register.

Brands Used by Other Traders

If your brand name is already in use by other traders, it is likely they will obstruct registration. You should avoid using a brand name of a well-known business, even if that business does not produce the same goods or services as you.

Key Takeaways 

Coming up with a brand that is both marketable and registrable as a trade mark is challenging. Even if your brand sounds good and works well on the Internet, you may run into problems in the future if you cannot protect it. By considering the issues discussed in this article, you will ensure your brand is better protected in the long term.

If you have any questions about protecting your trademark, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Sophie Glover

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