Three trademark mistakes your business should avoid
Establishing your brand and protecting your business are two of the most important considerations when setting up your business. Your logo is often the key indicia of your business that is most recognised and respected. Unlike copyright, trademark protection is not automatic and requires registration with IP Australia prior to a statutory right of entitlement being recognised.
A trademark is a symbol, logo, group of words, or even a scent that is used to readily recognise your business in the commercial world and helps distinguish your business from your competitors. A trademark will often also have a ‘good will’ value attached to it after years of successful use. Registering your trademark with IP Australia can be performed by the business owner; however there are numerous traps for which a person can fall into resulting in a loss of trademark protection.
The pitfalls that business owners often fall into when registering their trademark can include the following:
1. Selecting the incorrect class for registration.
In order for a trademark to be registered it must be placed into a class. There are numerous classes for which this can be done, and multiple classes that are often applicable to a type of business. A trademark is only protected from infringement in relation to the particular class that it is registered. For example, a trademark registered in the textile class is not protected if another person wishes to register their trademark, in the building materials class. This essentially means that if you do not ensure that your trademark is registered in every class that may be appropriate to your business then a competitor may be able to register the same trademark in a class that includes goods or services you also provide;
2. Registering a standalone symbol in the absence of the recognisable words attached to the business.
A trademark can also be registered either by words alone or the inclusions of a symbol, or often a combination of both. It is important to ensure that when registering your trademark that the words associated with your business in addition to your recognisable symbol are protected together;
3. Choosing a trademark that too closely mimics another competitor’s trademark.
Ensuring that adequate research is performed prior to attempting to register a trademark can also save costs. If sufficient research is not performed prior to lodging a trademark for registration then the application will be rejected as it is too similar to that of another trademark. This can often be a costly exercise, especially if multiple classes have been chosen.
For example, ABC Motors Pty Ltd carries on business in the car manufacturing industry. ABC Motors Pty Ltd in addition to selling and manufacturing cars also manufactures T-shirts with the ABC Pty Ltd logo. Mr Smith, the director of ABC Motors Pty Ltd, registers the company trademark in the vehicle trademark class. Later he notices that another company, XYZ Tshirt Pty Ltd, has started printing T-shirts with a logo extremely similar to that of ABC Motors Pty Ltd. Unfortunately, as Mr Smith did not undertake the proper searches to determine which classes his trademark should be registered (taking into account his type of business), XYZ Tshirt Pty Ltd is not technically in breach of his trademark. XYZ Tshirt Pty Ltd may continue to print the t-shirts as they have registered their logo in the clothing class.
How We Can Help
At Streten Masons Lawyers we can help by finding the correct class for your trademark to be registered and ensuring that your trademark is adequately protected in the field your business operates. Contact firstname.lastname@example.org to talk about how we can help your business in this area.