Collective: Trade Mark Basics for New Business Owners

In the world of brand protection, there are many aspects business owners should understand and consider before launching a business, product, or service.

We live in a very competitive world, and new brands are being launched into the marketplace every day, worldwide. With this in mind, it’s important for business owners to create a distinctive brand and understand the function and importance of trade marks for that brand.

What is a trade mark?

Trade mark registration provides a business owner the legal rights to use and promote a brand name in the respective market place that the trade mark owner operates in. Brand protection is essential to establish at the start of any business, as it will ensure that you are safe to promote that brand without any future infringement issues. 

A registered company name, domain name, and sales history of a company do not give you the rights to a brand name. Only trade mark registration offers legal protection to the use of a brand name. Trade mark registration is territorial, therefore protection is given per country. Trade mark protection lasts ten years and is renewable for as long as the owner wishes to renew it. Coca-Cola first registered their mark in 1893.

A trade mark can be a letter, number, word, phrase, logo, image, packaging, sound, movement, shape, or scent. The most common trade marks consists of words, letters and numbers. Slogans/phrases are often trade marked by large corporates with substantial budget campaigns. Coca-Cola trade marked the phrase, “Taste the feeling” in their 2016 advertising campaign.

Launching a distinctive brand

Before launching any business, product or services, there are five key things you can do to create and protect a distinctive brand. This is especially important if you are not in a financial position to obtain a trade mark, as if you’re the first to use your distinctive brand, you may be afforded protection under Common Law rights.

1. Avoid descriptive words within your brand name.

 If the brand name immediately tells the consumer what you offering, it can not be trade marked as it may merely describe the product or services. The function of a trade mark is to brand. If the name is too descriptive, it may be difficult to trade mark and protect.

Examples of descriptive brand name:

  • Coastal Buyers Agent, for a buyer’s advocate 
  • Delicious BBQ Catering, for catering services
  • Men’s Barber, for hair dressing services

2. Avoid using geographical names in your brand name. 

It is difficult to trade mark a brand which has a location name within the brand. A geographical location does not add to the distinctiveness of a brand.

Examples of geographical brand names to avoid:

  • Tasmanian Sparkling Wines, for a wine brand
  • Melbourne Go-Kart Racing, for go-karting facility
  • Australian Timber Company, for timber building materials

3. Be first to use the brand name.

Conduct research on Google, the business name registry, and a domain name registry to ensure that no one else in the marketplace is using the brand name you wish to use. 

The main test here is to determine if the new brand name will cause confusion in the marketplace compared to an established brand. While searching for a new brand name may show availability, only a thorough and varied search will determine if the new name is similar to an existing brand in the same category. For instance, “Peak Performance Coaching” may be available, but it conflicts with “Peak Business Mentoring”. Or, “Natural Homewares” could conflict with “Natural cushions,” but this may not be discovered without a full, in-depth search.

Efficient searching may require assistance from a trade mark expert together with a branding agency to determine whether a name is unique or not. It doesn’t make sense in launching a brand that is already in existence, as there will inevitably be confusion in the marketplace as to the source of that brand.

4. Be first to trade mark the brand name. 

The best protection for a business is to be first to use the brand name, and be first to file for trade mark registration of the brand name. This ensures that name is protected from copycat businesses and competition.

5. Enforce your trade mark registration rights.

Once you have launched and trade marked a brand that is unique, you are able to safely promote the brand name without fear of infringement. To keep that competitive edge, you must enforce your trade mark registration rights to ensure your brand rights are not being eroded. If you find a third party misusing your brand without authorisation, you must contact a trade mark professional to seek advice on how to proceed with enforcement.

Does your business need trade mark protection?

There are three key motivations behind trade marking a name. Consider each of these to determine if your business needs trade mark protection or not.

It is important to understand that a trade mark gives the trade mark owner the exclusive rights to that brand name. To keep these exclusive rights as a trade mark owner, you must be ready to defend these rights by initiating enforcement action if you find someone else using the brand within the same industry.

Branding protection is complex in some circumstances, especially if a brand it to be launched locally and has ambitions to grow internationally. A business owner may need spend time with a trade mark professional to work out a brand protection strategy for their new venture.

  1. You want to stop others from using your brand.

Many business owners want to prevent others from using their brand name. This type of trade mark owner must be prepared to register their brand name and have a fighting fund to enforce their trade mark rights. You must be prepared to send a ‘cease and desist’ letter to those who are using your brand in the marketplace, and willing to go to court to enforce your rights.

2. You want exclusive use of your brand name

Some  business owners are only concerned that their brand is protected for their own use, and aren’t worried about enforcement or that others are using their brand. In this case, you will obtain a trade mark registration to ensure no one can ask you not to use your brand.

3. You’re not concerned about being asked to change your brand

Many businesses do not seek trade mark protection as they are prepared to change their brand name if they receive a ‘cease and desist’ letter. These business owners are prepared to take their chances without knowing if they are infringing or not.

Trade mark symbols

There are two main symbols used in trade mark protection, often seen in advertising, packaging of goods, and on merchandise.

® registered trade mark symbol

This symbol indicates that the brand name is officially registered as a trade mark and has legal rights within the country it has been registered within. You can only use this symbol once you have obtained official registration and no sooner.

 trademark symbol (unregistered)

If you see this TM symbol, it indicates that the brand owner wishes to let consumers know that they intend to use the brand name as a trade mark, but it is not yet unregistered. Many multinationals initially use TM on their packaging as they can not use the ® (registered trade mark) symbol as not all countries have trade mark registration of the brand name at the time of distribution. In some countries it is unlawful to use the registered trade mark symbol before it is officially registered. 

For more information on how to protect your brand, contact the Sidedoor team today.