Demystifying trade marks:  What every entrepreneur should know

- March 7, 2024 4 MIN READ


Every successful entrepreneur knows there’s far more to building a business than just having a great product or service. Besides all the blood, sweat, and tears that go into business success, one of the most crucial aspects is safeguarding your brand—and the only way to do that effectively is by registering it as a trade mark. Trade mark attorney Jacqui Pryor shares everything you need to know.

It’s a common misconception that trade marks are the domain of the wealthy and that small businesses can simply fly under the radar and ignore the formalities and cost of trade mark registration, or that trade mark registration simply doesn’t apply to smaller businesses.

However, history is littered with examples of business failures caused by infringements on another’s rights (inadvertently or otherwise) and brands being defenceless against competitors with no legal recourse. Often, the cost of trade mark registration is far less than the cost of an unplanned rebrand due to inadvertent infringement of others’ rights.

Let’s examine what every entrepreneur should know about trade marks in Australia.

What is a trade mark and what can be registered as a trade mark?

A trade mark is a unique sign that distinguishes one trader’s goods or services from another.   Examples of these include a word, a catchy slogan, a logo, a sound, a colour, a movement, or a combination of these.  Even a smell can be a trade mark if it is capable of distinguishing the trader’s goods/services from the similar activities of others.

When this sign is registered with IP Australia – the governing body of trade marks in this country – it is protected by law. This provides the owner the right to to take steps to  prevent others from using the same mark (or a confusingly similar mark) for similar goods or services.

When you’re establishing a business or expanding, it’s crucial to consider how you are going to protect your brand’s recognition and reputation effectively.  When you register a brand as a trade mark, you also get the exclusive rights to use, license and sell the mark and prevent other businesses from piggybacking on your brand’s success or eroding its reputation.

Choosing a trade mark

Choosing a creative, distinctive trade mark is a vital aspect of brand protection.

A strong identifier is likely to be approved for registration, whereas generic or descriptive terms will be rejected.  It’s best to see if your creative idea is available before you invest any significant time or money developing it, otherwise you risk breaching another trader’s legal rights.  You can do this through a comprehensive trade mark search which will reveal whether your intended branding is unique and that it hasn’t already been registered by another business.

Registering a trade mark in Australia

Applications are governed by IP Australia. The process is generally straightforward, but it is beneficial to get advice upfront from a trade marks attorney. This can save you both time and money, as mistakes and omissions not only result in delays and penalties but can often result in the entire application being rejected or, worse, a registration that is not actually valid.

When you file the trademark application, you will need to specify the goods and services that most accurately represent your business activities. Getting this right is imperative.

You may find that another party raises an objection during the registration process if they believe there is a conflict of interest.  Around 5-10 per cent of trade mark applications will face third-party objections, which can be filed after IP Australia approves the application. Engaging a trade marks attorney will help navigate the opposition proceedings.

Requirements of use

Maintaining trade mark rights in Australia are somewhat use-dependent.

If your registered trade mark goes unused for longer than three years, it may be vulnerable to removal from the register on non-use grounds. Another party, as an example, may file for a similar trade mark and be blocked by your earlier filed trade mark. If you are not using that trade mark the third party could apply to have it removed for non-use so as to gain approval of their own application.   .

So, in order to ensure the ongoing protection of your brand and to retain your valuable trade mark asset, you need to ‘use it or lose it’.

International considerations

By nature, entrepreneurs are always developing ideas and looking for new opportunities and if you’ve set your sights on trade beyond Australia’s borders, then you need to understand international trade mark protection.

While there’s no such thing as an ‘world-wide trade mark’, it is possible to seek trade mark registration in those countries in which you intend trading (or are trading already).  While it’s not possible to get a single world-wide trade mark protection, Australia is a signatory to the Madrid Protocol which enables parties to establish legal rights in multiple countries or regions through a single application. There are some 120+ countries member to the Madrid Protocol which can be selected.

Duration and renewal

A registered trade mark can go on indefinitely, but you will need to renew it every 10 years – and use it of course!  You’ll need to keep tabs on the expiry date to avoid paying a monthly penalty for a late renewal and IP Australia only allows a six- month grace period.  If your trade mark expires and is not restored within the six-month grace period, then it will be removed entirely from the register.

Enforcing your rights

Once an application has been registered by IP Australia, the onus is on the owner of the trade mark to enforce its rights and protect the brand.

Entrepreneurs need to be vigilant in terms of monitoring the market for potential infringements and for ensuring that their own mark is being used appropriately.  If you suspect that your rights are being infringed, it’s always best to involve a trade mark professional so that the right legal steps can be taken.  But time is of the essence, and if you do identify a transgression of your rights, you should act quickly.

Protecting your brand online

As an entrepreneur, your digital presence is crucial to your success.

Registering a domain name is a good start, but many people fall into the trap of thinking that that will provide sufficient brand protection.  The reality is that a registered trade mark will provide you with exclusive enforceable rights across all online platforms, within the county/ies in which you have registered.

A last word on demystifying trade marks for entrepreneurs

Entrepreneurs are understandably enthusiastic about their offering, but when it comes to protecting that brand and safeguarding its success, passion has to be paired with practical considerations.  Like registering your brand as a trade mark.

There’s really no mystique to trade mark registration.  If you approach the process methodically and carefully, enlisting professional help if necessary to assist with the process and/or to manage and monitor your trade mark portfolio, you will arm yourself with one of the most powerful tools in terms of brand protection in today’s competitive and dynamic business landscape.

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