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Legal: Great brands – treat them right

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So, you’ve selected a great brand and have started to build consumer awareness and loyalty in it. And, of course, you’ve done the right thing to protect your rights in the brand by registering it with IP Australia. Your work is finished. Right?

Wrong!

Once a brand owner has established rights in a brand, it is important that steps and precautions are taken to ensure that such rights are not diminished or lost completely. Generic terms that we now use every day to describe a product were once valuable brands belonging to a single trader. Examples include BIKINI, YO-YO, TRAMPOLINE, LINOLEUM, ZIPPER and ESCALATOR. Owners of well known brands are on constant alert to ensure that their brands do not become “genericized” in this manner. While we may sometimes use words such as BAND-AID, WALKMAN, THERMOS, GLAD WRAP, ROLLERBLADE and BIRO in a generic way, the owners of those brands do their upmost to educate the public that they are, in fact, proprietary brands that only identify the goods of one trader.

The risk of gradually losing your brand to “genericization” is particularly great if your product is the first or an innovator in the marketplace.

What follows is a useful ongoing check list for brand owners to protect their valuable brands against genericisation.

1. The brand should be followed by a generic term, i.e. the common descriptive name of the product/service – if there isn’t one yet, you need to make one up.

INCORRECT: This packet contains 24 BAND-AIDs

CORRECT: This packet contains 24 BAND-AIDTM adhesive bandages

2. The brand should be distinguished from its surrounding text, e.g. initial capital letter, capitalised, different font or different colour.

INCORRECT: Use your lego to build these objects

CORRECT: Use your LEGO® building blocks to build these objects

3. Use the brand in the form in which it is registered and do not modify it or use it in a plural or possessive form.

INCORRECT: This packet contains 24 TEXTAS

CORRECT: This packet contains 24 TEXTATM markers

4. Use ® if the brand is registered in Australia or TM if it is an unregistered brand, at least the first time the brand appears in the text or packaging. TM can be used for either registered or unregistered brands.

CORRECT: Use AA batteries for your WALKMAN® personal audio player

5. The brand should not be used as a verb.

INCORRECT: Rollerblading is a fun way to get fit

CORRECT: Using your ROLLERBLADETM in-line skates is a fun way to get fit

While genericisation may lead to a total loss of rights, your brand’s strength could also be weakened or “diluted” if you do not take steps to stop other traders encroaching on your turf. For example, if you owned a trade mark registration for the GIRAFFE brand for your product, your rights in that mark would be weakened if, over time, you allowed other traders to use and register similar marks such as JIRAFFE, GERAFFE, HARRY THE GIRAFFE, etc.

Accordingly, you should watch both the marketplace and the Trade Marks Register for similar marks, and take prompt action to stop those marks from being used or from becoming registered. Don’t rely on IP Australia to police your registered trade mark for you – what IP Australia considers as being “too close” might be very different to what you consider “too close”, and there are many cases where a Hearing Officer in a trade mark opposition decides that two marks are too close when the original Examiner considered that they were not. A trade mark attorney can put in place a periodic watch on similar marks, on all marks in a particular field or on all marks of specified competitors.

Chris Sgourakis is a principal of Griffith Hack, heading up the trade mark group. He is a lawyer and trade mark attorney who acts for well known Australian and international corporations in a range of industries. A Barrister and Solicitor of the Supreme Court of Victoria and the High Court of Australia, Chris is experienced at conflict resolution and has represented in numerous mediations before the Federal Court of Australia. Find out more at www.griffithhack.com.au

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