The power of a registered trade mark as an intellectual property right should not be underestimated. A trade mark is a “badge of origin” to indicate a connection in the course of trade between goods and the person or consumer who will be applying the trade mark to the goods. This badge of origin as a registered property right can exist indefinitely if the registration is kept in force. Take the iconic “Coca-Cola” in cursive script. This trade mark has been registered in Australia in respect of aerated non-intoxicating beverages, beverages, and syrup for making beverages since February 1920.
A strong trade mark associated with a business can translate into a competitive advantage in a busy marketplace. A registered trade mark provides the additional benefit of being a property right that can be enforced, assigned, and licensed. Where possible, seek trade mark registration to protect your brand investment
Adopting a trade mark that represents the brand’s core values and is registrable means striking a balance between many factors such as aesthetic appeal, the value of distinctiveness and the avoidance of trade mark infringement.
There is often a strong desire for a business owner to choose a trade mark that describes the business operation, or the goods/services provided by the business e.g., “Smith’s Plumbing Services” or “Best Plumbing Services”, or a logo in the form of a toilet plunger, for plumbing services. A trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. One or more signs or words that might reasonably be required by a competitor to describe similar goods or services cannot be a badge of origin, and cannot be registered as a trade mark.
A non-distinctive trade mark can be the death-knell for trade mark registration and will lead to immediate refusal. To overcome such a refusal, the trade mark applicant must supply evidence of use showing that the trade mark has become distinctive for the goods or services.
Apart from aiding with trade mark registration, a distinctive trade mark can enhance recall for a customer – an important aspect of effective marketing. Furthermore, it is less likely that a distinctive trade mark will conflict with other trade marks already in use.
When choosing a distinctive mark, aim for an invented word (e.g., Xerox, Kodak). An invented word without a meaning will, on its face, be distinctive and eminently registrable. Alternatively, a word completely unrelated to the goods or services will likely be distinctive (e.g., “splash” for front end loaders).
It is recommended to stay away from geographical locations, descriptive or laudatory words, generic terms, common surnames, common acronyms, serial numbers, or letters when choosing a trade mark.
Layers of protection
In Australia, a trade mark is a sign that can take many forms including, but not limited to, a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, trade dress, sound or scent, or a combination of these.
The crucial thing is that the sign is used as a trade mark. That is, the trade mark is used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. A business name may not qualify as a trade mark unless it is used as a trade mark. A sign which is not used a trade mark will not be registrable or enforceable.
Best practice is to register every trade mark that is used in connection with goods/services. Creating a thicket of trade marks gives the trade mark owner options in terms of enforcement and at least an arguable defence against allegations of non-use in relation to a particular mark.
The house brand may be a word trade mark. The word trade mark is almost always used in various forms of branding related to the goods/services. The house brand may be used on its own or in conjunction with another sign such as a device. If this is the case, it is advisable to register the word only, the device, and the word/device combination to provide layers of protection. Registration of a word as a trade mark is a broad form of protection as it is not limited to the word in a particular style or font. Again, if the word trade mark is used exclusively in a stylised (figurative or fancy) form in branding, then this stylised form should also be registered. A classic example of house branding is the branding model adopted by Apple. Apple (word) is a house brand that is used alone, or with the apple-with-bite device, or with other forms of Apple trade marks.
It is a good idea as your business grows to conduct regular audits of the trade marks that are in use and ensure that there is complete protection.
Prefiling Due Diligence
A trade mark application will be objected to if there is the same or a similar existing trade mark on the Register.
Conducting a search of the Register of Trade Marks before filing a trade mark application or even prior to becoming financially and emotionally invested in a potential trade mark is highly recommended. A prefiling search should indicate whether another trader has filed for the same or a similar trade mark.
Signs that cannot be registered
There is a raft of signs that are prohibited by law to be registered trade marks, such as signs that may be regarded as scandalous (e.g., ALL <name of religion>S ARE EVIL), the Olympic logo, the national flag, and certain Defence Force terms and emblems.
Choosing a trade mark can be an exciting and creative process that expresses the ethos of your business. On a more practical note, by following some simple principles set out above, a distinctive trade mark that does not infringe another trader’s rights can proceed to registration without too much fuss – saving time and money. And will also be a valuable and long-lasting asset to any business and help you stand out from the crowd.