Trade Marks: What are they worth?

Guest article written by Nathan Donovan, Principal of Brisbane commercial law firm, Donovan Legal.

When I talk to business owners about trade marks, they usually come back at me with the same old reactions.

1. I didn’t realise I could register a trade mark.
2. I assumed trade mark registration was really expensive and just for big business.
3. I didn’t think I needed to register a trade mark. I’ve already registered my business/company name and/or domain name.

My response?

1. Trade marks can (and should) be registered whenever possible.
2. Trade mark registration is not as expensive as you would think (excluding any professional advisor costs, filing and registration fees cost as little as $420 and initial protection lasts for 10 years).
3. Registration of business names, company names and domain names will give you a measure of administrative protection but not the level of protection enjoyed by the owner of a registered trade mark.

If you’re a business owner ask yourself this question; “What is my brand and what is it worth to my business?”  For many businesses their success will be tied to both the strength of their unique selling proposition and its ties to their brand.  What you don’t want is to put all your energy into creating a great product or service only to see a competitor imitate your brand.  Trade mark registration is designed to protect your intellectual property rights to your own brand. That being said, the only way to utilise the benefits of trade mark registration is to first understand how they work.

What is a trade mark?

A trade mark extends beyond just the name of your business and its logo. It includes almost anything which distinguishes your goods and services from those of a competitor.   Some of these distinguishing features can include letters, shapes, colours, sounds and even scents.

It is crucial that that your trade mark is unique and distinctive rather than just descriptive. If your mark simply describes where you are (e.g. Brisbane Dentists), what you sell or do (e.g. Burger Joint), or the kind or quality of your goods and services (e.g. Best Cold Beer), chances are, your trade mark would not be capable of registration.

What are some of the benefits of trade mark registration?

A registered trade mark is recognised as a type of personal property that can be sold or commercialised (e.g. franchising and third party licensing).  Once your trade mark is registered you have the exclusive right to you use your trade mark throughout Australia in relation to the goods and services specified on your trade mark certificate.  In fact, at the same time you register your trade mark in Australia, you can also register your trade mark in other countries, provided they are signatories to what is known as the Madrid Protocol (which most major economies are).

How does a trade mark differ from a business name, company name or domain name?

It is important to understand that business and company name registrations are not designed to give business owners proprietary rights in the name. In reality they serve to enable the public to find out which individuals or legal entities stand behind the business name or company.

The ASIC, which manages business and company name registration, has some administrative processes designed to restrict registration of the same or similar business names. Strictly speaking, business name registration does not prevent someone from registering a business name that is:

• similar to your business name; or
• the same as your business name if they already own the registered trade mark.

Similarly, registration of a business name will not prevent a competitor (or even a cyber-squatter) from registering the same or a similar domain name to your business name.  When it comes to .com.au domain names (a second level domain or 2LDs), it is good to keep a few things in mind.

1. There are no proprietary rights to a domain name.
2. If domain registrations are not renewed every two years the domain licence lapses and can be registered by someone else.
3. Whilst there are policies requiring an appropriate commercial justification when registering a .com.au domain, the policies are quite broad it is usually not hard for a competitor to register similar domains to your brand.
4. Before you adopt a brand, make sure the domain name is available AND register!

What should you do if you want to register a trade mark?

Trade marks can be registered online at www.ipaustralia.gov.au. This website offers a wealth of information to guide you through registering your own trade mark. Of course the safest thing to do would be to seek out a lawyer or trade mark attorney to register your trade mark for you.  Doing your own trade mark registration can be risky and it is far better to talk to an experienced lawyer who can ensure your trade mark is properly registered with the broadest protection possible.