Brands, Logos, Slogans, Company names and Business names can all be protected using Trademark Registration with quality trademark applications.
We are often asked – do I need a patent or trademark?
Patents – You won’t need a patent unless you have to protect novel and inventive products, ideas, systems or methods.
Trademarking a name or Trademark Registration of company names is used by competitive business and company owners who want to control and stop unauthorised trading, where other business or companies wish to leverage another’s brand and logos. Occasionally a competitor may trade with or use a brand in a damaging, misleading or improper commercial manner. The only way to stop this conduct is to have a proper trademark lodged and ready to act on.
Take for example in Europe where competitors began improper commercial use of the BIG-MAC trademark when the company McDonald lost its Registered Trademark in Europe – see our write-up on the issue here.
So, for example, if you are a Sydney or Melbourne company or business, you need to consider trademarking the brand name. As the owner, you cannot expect to rely on the company registration to stop others using the company or business name.
Once we have registered the trademark for you, it will protect you in all States of Australia, not just in Sydney or Melbourne, Brisbane, Perth, Adelaide or wherever you reside.
If there is a Court order for Trademark infringement, then Compensation will be awarded by the Judge.
The prosecution can either claim costs for damage to the Trademark’s reputation, or profit taken by use of the company’s Trademark Registration.
Even similar trademarks can infringe, where a word or word(s) are shared between them, or there is deceptive variation.
Where are the risks and problems?
Many company names and business names are not trademarked properly. The owners are under a false sense of security thinking they can act when a copycat uses their brand or logo. Our Trademark Attorneys assist company and business owners by auditing trademark registrations.
We usually identify legal gaps or issues as these aspects are NOT assessed by IP Australia (the Trademark Office), during the application phase.
The Trademark Act doesn’t allow amendments to fill in gaps or missing details in pending or registered trademarks. We often have to lodge a fresh trademark application to properly protect the business name or company name.
Application Options
The available trademark application options are:
1. Trademark Your Brand Name: For example, you can register your company name or business name as a Trademark. Contrary to belief, the company or business registration with Australian Investment and Securities Commission (A.S.I.C.) provides no legal rights to the name. Trademark Registration for word(s) only protects the text, and does not protect any impression such as graphics, signatures, fonts, etc.
2. Trademark Logos: Logos such as Nike’s “Tick” symbol have been registered as a Trademark. This allows the owner to stop copying and unauthorised use of the graphics.
3. Trademark the Combination of the brand and logo: This is where both the word and image combination are registered as a Trademark together.
4. Trademark slogans or other points of brand difference: For example, Nike’s “Just do it” is a well-known slogan.
Why use a Trademark Attorney?
Your Trademark Attorneys or Trademark Lawyers can work out the best formats to use when lodging a Trademark Application. Choosing the correct format is important, otherwise the trademark may not be enforceable against Trademark copycats or could be subject of Trademark non-use (cancellation) proceedings.
Also, if you put in the incorrect detail, it will be processed by IP Australia, but then when it comes to a conflict, lawyers determine if the Trademark fails to enforce.
Why use an experienced Trademark Attorney?
Yes, you pay for what you get, especially in trademark law.
One trademark can fail badly because of the details and way it’s lodged. And this cannot be undone. A new application needs to be lodged to fix the protection, if still possible to do.
We often fix cheap trademarks done by other companies. However, it is important to note that we can only fix a problem if it’s early on, because a rival may gain the proper rights and protection to the brand (or similar), beforehand.
Can you patent a business name, or patent a company name?
Some people refer ask us how do you patent a company name or how do you patent a business name?
In this case, the use of the term “patent” is incorrect.
Protection of a business name or company name does not arise through the Patent system.
In fact, it is Trademark law, the Trademark Act and Registration of a brand as a trademark which protects the business or company name, not a patent.
Similar misconceptions exist with “copyright” of a brand, logo, business name or company name. In case you get it wrong, it is important to consider a professional representing your Intellectual Property affairs.
Example of a Strategy we use to remove poor quality Trademark Registrations
Our Trademark Attorneys often find errors or incorrect details in rival trademarks. We lodge an application to IP Australia to cancel the Trademark Registration. The last one we did in 2020 was remove a Trademark Registration which had been registered for 8 years.
It was preventing our client’s trademark from being accepted (Adverse Report issued citing the rival’s trademark). We researched/audited the cited trademark and found errors. We prepared and lodged a case with IP Australia pointing out these issues, who then removed the rival’s Trademark, per the requirements of the Trademark Act.
Our client was so surprised to find out that we removed the problem cited Trademark for them, and our client’s trademark was accepted and Registered.
How are trademark applications processed?
The Government Office responsible for assessing and registering trademarks is IP Australia. When the Trademark office reviews a trademark, the Trademark Office will firstly search to see if there are any similar or identical trademarks already registered. This usually occurs 7 months after lodging the application, for a standard trademark application.
Importantly, IP Australia does not check the lodged content to ensure it has the quality necessary to really protect your position, or whether the detail misses important information. Only a Trademark Attorney is qualified to do this, and they may need to re-lodge an application if your position isn’t truly protected.
If there are no problems with the basic requirements, then IP Australia will assess whether the trademark is capable of distinguishing the goods and/or services applied for. This is difficult to explain, but there are many rules which allow word(s) to qualify, or not as being a Trademark. If they don’t comply, then the Trademark will be rejected as is open to the first business to register if they know how to overcome the problem.
Importantly, IP Australia is not held liable for wrong decisions, the applicant wears the infringement and liability if there’s a conflict with another party.
If accepted, then there is a formal “freeze period” of 2 months where Third Parties can oppose the Registration of the trademark. Oppositions can take 1-2 years to sort, and range in price from $50,000-$150,000. You can really reduce the chances of an Opposition by having your Trademark Attorney conduct a comprehensive search.
Prior Research/Searches
Comprehensive searches by a trained professional Trademark Lawyer or Trademark Attorney are a must. Our Patent and Trademark Attorney firm has been conducting searches for 22 years, and really knows how to spot issues up-front.
Premium searches are a must, not basic identical searches.
A decent quality search can save you a lot of funds in the longer term, and from re-applying or Court action.
What doesn’t the Trademark Office do?
They don’t:
- Advise whether you have the right Trademark Application content, classes, goods/services are correctly described, or whether you omitted other important aspects.
- Advise if there are other factors which could cause cancellation of the Trademark Registration.
- Advise if the content would be legally enforceable or has gaps which could allow a copycat to avoid infringement or apply for their own trademark.
- Conduct audits or advise you if someone else applies for the same or similar trademark(s).
- Spot problems with how you are trading that don’t comply with the Trademark Act (1995) requirements, and which could cause removal of the Trademark.
- Remind you when changes to your business, or brand approach could impact your older Trademark Registration, and trademark position.
- Provide legal advice.
This is where our Trademark Attorneys can benefit you.
Registering Business and Company Names as a Trademark
Businesses and Companies owners often regard the first to register a Trademark provides exclusivity, but this isn’t the case for Trademarks in Australia.
In addition, an Australian Investment and Securities Commission (A.S.I.C.) business or company name registration does NOT provide any ownership or rights to the trading name.
The right to use a business or company name registration is underpinned by owning the Trademark rights, as stipulated by the requirements in the Trademark Act (1995).
Is a Registered Trademark enforceable?
Registering a trademark for a business name, company name, brand, logo, slogans, online personal names and words is not easy to get it correct. The disadvantage for businesses is they don’t know the Trademark Act requirements, laws and Court cases where this has been interpreted. Without the correct Trademark Application content being checked by a professional Trademark Lawyer, enforcing may be impossible, and the Trademark Registration may be removed or revoked through Court order.
A Trademark Attorney should review your business, audit what you provide them with, compile, advise and lodge a Trademark Application for you. Failure to conduct each one of these steps comprehensively can lead to loss of the Trademark Application/Registration.
They can also advise on strategies to acquire and predict longer term whether Trademark Registration ownership of a brand, logo, name or slogan will have any issues or problems.
How can a Trademark Attorney help you?
A Trademark Attorney is a specialist in understanding, advising and navigating businesses and companies to register their Trademarks and protect their valuable brand goodwill and reputation.
Our Trademark Attorneys can assist you to reduce conflicts and hidden surprises that many businesses and companies endure when applying without help or comprehensive Trademark services.
If you want your own Trademark Attorney to represent your Trademark portfolio, conduct Trademark audits to check your rights aren’t faulty and are actually enforcement, advise you on what problems you may face, then contact our Trademark team of Attorneys on 1300 138 802.
