This guest article was written by Geraldine Rimmer, Trade Marks Attorney/Solicitor at Michael Buck IP
*****
Your business plans have finally come together. You have a name and maybe even a snappy new logo as part of your branding plan. You might have a catchy tagline or a distinctive shape for your product packaging. What to do next? Register each as a trade mark of course!
WHY?
With a trade mark registration, you’ll gain:
1. Protection over your reputation
As the owner of a registered trade mark, you can bring an infringement action against a copy-cat without having to submit evidence proving the reputation of your trade mark. Your registered trade mark can be used to prevent the infringing use of a company name, business or product name, shape of packaging, tagline and/or logo.
2. Deterrence
Third parties may be encouraged to re-brand away from your registered trade mark, rather than risk an allegation of infringement.
3. A defence to infringement
A registered trade mark can provide you with a defence to an allegation of trade mark infringement raised by a third party.
4. A continuing monopoly over your most valuable business asset
As long as your renewal fees are paid every ten years and you continue to use your trade mark as registered, your trade mark registration can continue to protect your name/logo forever.
And the best bit? All of these benefits are provided nationwide – trade mark registrations are rarely subject to geographical limitations within Australia. On the other hand, unregistered (or “common law”) trade marks are geographically limited to wherever reputation can be proven.
SO, WHAT EXACTLY SHOULD YOU REGISTER?
Often, a trade mark forms only a small portion of an overall brand. Your brand may be represented by a very distinctive font, logo or distinctive colours. Your particular business ethos, product quality and customer service goals might also form part of your brand. Whilst these things are all very valuable from a marketing perspective, it’s likely not every element can – or should – be protected as a trade mark.
A registered Trade Marks Attorney can help you figure out what aspects of your branding would be best registered to maximise the effectiveness of a trade mark registration, giving you peace of mind that the value you’re building in your brand is properly protected.
TIPS FOR CHOOSING A STRONG TRADE MARK
There are so many things to consider when launching a new business, product or service. Choosing a trade mark can be a very exciting step, but it is important to get it right from the outset.
Firstly, you could put together a list of potential marks and then go through and consider the relative strength of each mark; a strong or distinctive mark is easier to register and to protect.
To choose a trade mark that is inherently distinctive, try to avoid names that refer to a geographical location where the business is, or could be, carried out. For example, TOOWOOMBA HOUSECLEANING SERVICE is not a distinctive trade mark because any number of housecleaning services might wish to do business in Toowoomba and legitimately use this trade mark. There are some situations where geographical names may form distinctive trade marks. For example, NORTH POLE for bananas is distinctive because banana producers would not conceivably need to use this trade mark.
Invented words are usually inherently distinctive so long as they do not directly describe the goods or services that they are used in connection with. For example, XEROX® for photocopiers is highly distinctive. However, ORGANIC BODY CREAM for a body cream made from organic ingredients would be lacking in inherent distinctiveness.
Laudatory words that would normally be used to describe goods or services in exemplary terms usually lack inherent distinctiveness. For example, NATURALLY ORGANIC for organic based cosmetics, EXTRA FRESH for fruit and vegetables and HIGHLY CONFIDENTIAL for private investigation services are all lacking in inherent distinctiveness.
Keep these tips and benefits in mind when deciding whether or not to register your product name as a trade mark. If you have any questions or you need to discuss your trade mark needs, contact Geraldine Rimmer on geraldine@mbip.com.au.
About our Guest Writer
As a trade mark practitioner, Geraldine Rimmer has been assisting Australian brand owners since 2001. Geraldine enjoys working with innovative clients including cosmetic companies, assisting them with their branding strategies and general IP protection.
Preparing and progressing a trade mark application can often involve subtle issues that if ignored or not properly handled can reduce the value of the resulting registration. Geraldine specialises in the filing and prosecution of trade mark applications both in Australia and overseas to maximise the value of the resulting intellectual property right. Her work involves due diligence, trade mark searching, overcoming examination reports and also contentious areas such as oppositions and dispute resolution. Geraldine is experienced in handling Hearings before the Trade Marks Office and the supervision of trade marks portfolios of companies throughout Australia.
To get in touch with Geraldine, please see below :-
Phone: 07 3369 2226
Email: geraldine@mbip.com.au
Web: www.patentsandtrademarks.com.au
Firm Address: 159 Musgrave Road, Red Hill 4069
LinkedIn: www.linkedin.com/in/geraldinerimmer
Facebook: https://www.facebook.com/geraldinerimmer.tmattorney.7
