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Why trade marks matter and five questions you should ask yourself about them

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In the heady rush of building and running a new business there are many demands on an entrepreneur’s attention. Is the website up and running? Is the business’s name registered? Are the accounts set up?

Among the million and one things that need to be done to become your own boss, it’s understandable that some things may slip through the cracks or put off for another day.

Don’t let thinking about trade marks be one of those things.

Why? Because a good trade mark can be what sets a business apart from its competition, making it easy for customers to find and remember.

And to protect the value of the trade mark to the business it should be registered with the Australian Intellectual Property Office – IP Australia. Registering the trade mark gives the business protection, for example against imitators who may try and muscle in and copy their success.

The world’s biggest companies like Apple have extensive protections for their trade marks because they know copy cats can damage their businesses.

So what do you need to do when thinking about trade marks?

1. Is the mark describing the goods or services it will be used on?

One of the requirements for registering a trade mark is that it cannot be purely descriptive of the goods and services that it is used on. For example, the trade mark GREAT HOME LOANS will be difficult to register because it describes the services offered, being home loans. On the other hand, KODAK is a strong trade mark as it is in no way descriptive of the goods, being cameras. Choosing a distinctive and non-descriptive mark will give you the best chance at registering your mark and will help you build a strong and identifiable brand.

2. Is the trade mark already taken?

The best way to determine whether your proposed mark is available for use is to instruct a trade mark clearance search. A trade mark clearance search involves a comprehensive search of the trade marks register, and other searches to determine whether common law rights may exist A search will identify not only use of the identical mark, but also a wide range of potentially similar marks.

Doing a quick Google search yourself can be helpful in ruling out obviously conflicting marks, but it does not mean the trade mark is available for use.

3. Have you started using the mark?

We strongly recommend instructing a trade mark search before committing to, and starting to use a trade mark. Using a trade mark without a clearance search could mean that you are infringing other parties’ rights.

If you have already used the mark for some time then it is prudent to file an application to register it as soon as possible.

4. What are you using, is it a logo or a word mark or other?

If you are using a number of trade marks, for example a word, a logo or a combination of both, then it is best to seek advice as to which marks should be registered. Your adviser may locate marks you may not even be aware are able to be protected. Advice will also assist you in avoiding possible objections, for example on the grounds that the mark is not sufficiently distinctive.

5. What goods/services will you be covering?

When you file a trade mark you need to specify the goods and/or services in relation to which the mark is to be used. Goods and Services are divided into 45 classes – 34 classes of goods and 11 classes of services. It is best to seek advice as to which goods and/or services to cover in order to ensure adequate protection of your brand. It is not possible to add goods/services to an existing application that would have the effect of broadening the scope of protection, so it’s better (and cheaper) to get it right the first time around.

Jurgen Bebber is a trade mark principal at Griffith Hack helping clients in protecting and enforcing trade marks. He also specialises in internet related issues ranging from cyber-squatting to cyber fraud. Griffith Hack has recently launched an online platform businesses can use to self manage their trade marks called Amplia.

Jurgen Bebber
Jurgen Bebber
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