Company and Business names can be protected using Trademark Registration to claim ownership of a business name or company name brand itself and associated logos. Trademark Registration of company names is used by the majority of competitive CEOs who want to stop (prevent) competitors from using the company name as a brand or in a misleading or improper commercial manner. Take for example in Europe where competitors began improper commercial use of the BIG-MAC trademark when the company McDonald lost it’s Registered Trademark in Europe – see our write-up on the issue here.
A Trademark Registration allows a company owner’s C.E.O. to claim compensation for trademark infringement of it’s core company trademark. If there is a Court order of Trademark infringement, then Compensation can requested either for damage to the Trademark’s reputation, or profit taken by use of the company’s Trademark Registration. Even similar brands can infringe, where a word or word(s) are shared between them and the Trademark Registration.
Trademark Registration Options
Many company and business owners are confused about what to trademark. Our Trademark Attorney assist many company and businesses to trademark their name and logo (if it is warranted), after a legal determination.
The available trademark application options are:
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.
Trademark the Graphics or Logos: Logos such as Nike’s “Tick” symbol have been registered as a Trademark. This allows you to stop copying of the graphics.
Trademark the Combination of the brand and logo: This is where both the word and image combination are registered as a Trademark together.
Why use a Trademark Attorney?
Your Trademark Attorney or Trademark Lawyer 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 will determine if the Trademark Registration fails to enforce.
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 in turn removed the rival’s Trademark, per the requirements of the Trademark Act (1995).
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.
Comprehensive searches by a trained professional Trademark Lawyer or Trademark Attorney is a must. Our Patent and Trademark Attorney firm has been conducting searches for 25 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?
- 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 which exploits the gaps.
- 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 or email our firm.