[EP 007] Answering Common Questions About Trademarks

Trademark registrations are one of the easiest and cheapest ways to protect a business. Today we delve into the basics of this area of trademarks:

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EPISODE HIGHLIGHTS

1:13 Do I really need a trade mark registered?

4:22 When is a trade mark not fit for your business?

5:19 Trademarks vs company name, business name, domain name

7:17 Do you have a name that can be registered as a trade mark?

10:25 Is there someone using a similar name in the marketplace

11:09 Should you change your name if it’s very generic and can’t be registered as trade mark?

12:11 Is trade mark registration expensive?

14:21 Is trade mark registration something that we can do ourselves internally?

15:33 Choose the right class for your business

17:13 Can I make money out of registering my trade mark?

FULL TRANSCRIPT

This is Joanna Oakey here from Talking Law and today we are talking about trade marks.

Today we are talking about the frequently asked questions that we receive in relation to trade marks so we can tackle some of the issues that we hear or the questions that we hear time and time again.

I’ve got a whole heap of questions here. Today I'll just run through them one by one. But if you feel like I’ve missed something that you really want to understand, just head over to our show notes at talkinglaw.com.au and shoot an email through to us to let us know what other things you’d like to hear about.

When is a trademark not fit for your business?

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Do I really need a trade mark registered?

Let’s kick off with the first question. Do I really need a trade mark registered?

That’s quite a broad question and something that quite often we hear from businesses both who are starting out and who’ve been in business for a long period of time. Let’s tackle them one by one.

Firstly, our businesses that are just starting out. Do I really need a trade mark registered?

Well the answer for you is whether or not you think brand would be important for your business moving into the future - whether you want to be in the position to be able to stop people from using a brand that’s similar to yours in relation to the types of things that you’re providing under the brand – so, your goods or your services. The second component of the question is: Do you want to be protected against someone forcing you potentially to have to change brands? And that’s what trade mark registration is all about. It’s about giving you the opportunity to be stronger in stopping competitors from using a similar mark and from preventing the environment where you are likely to be required to change your mark if someone else was using a mark similar to yours first.

The reasons that we use a trade mark in this way, are that - number one - the process of applying for a trademark is a process in which you need to understand who else is in the market using the mark and who has registered trade mark rights for that mark.

So the first thing is, when you’re starting a new business, you should absolutely ensure that you at least understand if there’s any sort of risk around in relation to you using a mark and the process of trade mark registration helps to pass you through this process. Whether or not you decide to protect your mark or register your mark after assessing whether or not someone else has trade mark protection for that mark, is then a decision based on where you are in your business, and how important you think brand will be for yourself in the future.

Then stepping back and looking at the second case scenario, which is a business who has already been operating for a while asking whether or not they need a trade mark registration, the answer is somewhat different. The longer you have been using a mark, the less likelihood there is someone else that will come in and claim that they have been using the mark first and take it off you. But I have to warn you, this absolutely does happen, not very often but certainly I have seen it on a number of occasions. I’ve seen it with companies that have been around for decades suddenly finding out that someone else had a registered trade mark before they did and was now trying to stop them from using their own mark in the market that they’re playing in.

For an established business, you still have the consideration of whether or not you want a trade mark registration to protect your business, and if brand is important to you, if you think that there’s a likelihood that you might want to stop other businesses from using a similar mark, then once again a trade mark registration is for you.

When is a trademark not fit for your business?

But if you would say in answer to that question that firstly, you don’t care if someone forces you to change your name because rebranding wouldn’t impact you and number two, you don’t care if other traders in the market are using a similar name, then maybe a trade mark registration isn’t something that you need to put your time and expense into. But when I say time and expense, to be honest, trade mark registrations are extremely cheap depending on how broad you want that protection, but simple trademark protections are really cheap - you pay your fees on a 10 year basis, so you get your trade mark registered and your trade mark registration fees last you for ten years, and then you only pay a renewal fee once every ten years, which is a fairly small amount of money every ten years. So really, it’s what I call one of the cheapest business insurances around.

Trademarks vs company name, business name, domain name

The second question I’m often asked is: I have a business name or a company name or a domain name that has my mark in it, do I still need trade mark registration?

My answer to that is that business names and company names are completely different to the concept of trade marks.

It might be that you have been able to get a certain business name or a company name, remembering that business names and company names essentially are identifiers so that people know who it is under the company. They have something that they can search here in Australia to find out who is behind the business that they’re dealing with. So business names and company names are identifiers, but trade mark registration essentially is the thing that provides you ownership of a particular mark and having a business name and a company name registration is not in and of itself enough to necessarily defend yourself against other people who've claimed that they’ve come up with the similar name first, and it’s also often on its own not strong enough to stop competitors from using a similar mark.

Trade mark registrations sit on top of business name and company name registrations. They’re “additional to” not “instead of.” I’m often asked the same question in relation to domain names: I have a domain name, do I need a trade mark registration? The answer is the same as what I’ve been talking about before. If you use a mark in a domain name, the only reason that you potentially might decide that you want a trade mark registration for it is because you want to be able to stop other competitors from using something that’s deceptively similar or you want to protect yourself from the situation of someone else trying to remove the use of the mark from you.

Do you have a name that can be registered as a trade mark?

The third question that I want to talk about today is the question that’s put to us often: do I have a name that can be registered as a trade mark?

This is a really good question because lots of names that people come up with when they’re thinking of how to market their business are often generic or descriptive names, and that makes sense from one perspective so that when people hear your business name they understand what you’re about, say for example, Brilliant Marketing or Melbourne Meat Supply or other sort of names like that, that are descriptive of what you do. So it makes sense that words or names for your business or your product that are descriptive will be easy for customers to understand what you do. But the problem on the flip side is it’s very difficult to stop other people from using words or names in relation to their products or services that are descriptive. So what we suggest is that the best type of mark for business in relation to giving you the ability to stop other competitors from using something similar to it is to choose a mark that is more unique. The more unique a name is and the less descriptive or the less generic it is, the higher the likelihood that you will have a mark that’s capable of registration.

Should you change your name if it’s very generic and can’t be registered as trade mark?

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We’re going to do a podcast episode that’s specifically focused just on how do we create names that are most likely to be registered and most likely for us to be able to stop other traders from using, so I won’t go into this too much further today. But just bear in mind that for a mark to be registered, it’s far better for it not to be generic and for it not to be highly descriptive and that’s also super important if you actually want to be able to try to stop competitors from using something similar in the future.

The other thing that I suggest to businesses when they’re coming up with names is that, if you’re choosing something that’s descriptive, it can often be hard for people in the public to remember exactly what your name is in comparison to other people’s names.

So, say for example we use Sydney Dental Supplies. If another trader had a name that was say for example Dental Supplies Northern Beaches or Dental Supplies in Sydney, you can see that traders might find it really difficult to remember which is you versus which is them. Not only can you not stop other traders from using names like that, that are highly descriptive, you also have an issue that it’s easy for your customers to make small changes that then will confuse the name in their minds. The more unique a name is the easier it is for customers to identify that it’s you and the easier it is for you to keep other traders and competitors out of the market using something similar.

Is there someone using similar name in the marketplace

The other element that I think that we need to talk about here that’s really important in relation to whether or not you have a name that can be registered is whether or not someone else is using a name similar to that out in the market place. One of the problems is you may not realise right in the beginning whether or not someone else is using that mark. One of the best thing that you can do to protect your business, if you aren’t sure if someone else might be using a similar mark, is to get your trade mark registration in as early as possible in the life cycle of the business so you’re the one who’s holding the trade mark registration and you get the protections that are provided by holding that trade mark registration.

Should you change your name if it’s very generic and can’t be registered as trademark?

Let’s move onto question number four: what if I have a name that is so generic that it can’t be registered as a trade mark, should I think about changing my name? This is something that we're often asked by businesses when they suddenly realise that the name that they chose all of those years ago is actually going to be very hard to stop other competitors using similar variations of. I guess at the end of the day this is really a decision for you as a business on the basis of how important brand is, and whether or not you’re looking at selling the business into the future.

I think the most important thing though is that you aren't thrust into this situation without realising it. Therein I think lies the secret to when you’re coming up with the new brands for your business, whether that’s a new business name or company name, or just a new brand name that you’re using for the product or service that you’re offering, try really hard to pick something that is protectable at the end of the day even if you don’t choose to initially protect it.

Is trademark registration expensive?

The fifth question that I’m often asked is: is trade mark registration expensive? - which I think is a great question - why not? We all want to understand what the costs are in relation to our business. But of course, answers to this always have to be relative, so I guess my question straight back at people is - is car insurance expensive? And I guess the answer to that depends on whether or not you have an accident. If you pay your car insurance each year for, let’s say, you know one or two grand a year and you have an accident one day and you’re able to claim a large amount on that insurance. Then, it’s unlikely that you would rank that car insurance as being expensive. But of course you won’t know until you’ve been in the situation where you’ve been able to utilise your car insurance to be able to assess whether or not it’s expensive. That’s the same answer really with trade mark registration. If you don’t get your trade mark registration and you end up in the situation where you’re being attacked for your use of the mark, or you’re in the situation where you’re not able to stop a competitor from using a similar mark, or it’s quite difficult for you to stop a competitor from using a similar mark, that might cost you a massive amount in lost time, in marketing expenses if you have to rebrand, and in legal fees if you are having to fend off an attack or make an attack on something that’s not based on a solid basis.

In that sense, whatever you paid for trademark registration probably wouldn’t be seen as expensive in the cold hard light of day in comparison to the sorts of cost that you may have to incur if you don’t get it. But just so you know, trade marks, generally speaking from a really simplistic perspective, for the simplest sort of trade mark that you can get in Australia, are usually less than a couple of thousands of dollars in total for the whole process and that gives you ten years worth of registration so I actually think it’s one of the cheapest types of insurance you can get for your business. But as I said, it’s all relative and a decision that’s up to you.

Got questions about trade marks – here’s a good place to start.

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Is trademark registration something that we can do ourselves internally?

The sixth question in our list of frequently asked questions that we’re tackling today: is trade mark registration something that we can do ourselves internally because we may have a contract team in house, or we have a marketing team or a small business on a budget? The answer to that is yes. Technically speaking, trade mark registration is something that you can do yourself just like you can draft a contract yourself or you can even potentially deal with the sale of a property that you are dealing with yourself. But the question is, in doing it yourself, do you really understand what you’re doing? And there are number of things with trade mark registration that it’s really important to remember that go to the strength of the protection of your trade mark. Trade marks are one of those things where we won’t really know how strong our trade mark protection is until the point of time when we are trying to use it.

The sorts of things that can really impact the strength of the trade mark protection are whether or not you’ve chosen the right entity to register your trade mark in, whether or not you’ve chosen the right classes to registered your trademark in.

Choose the right class for your business

There’s forty-five different good classes of goods and services in relation to trade marks and it’s important that you’re choosing the right ones for your business, or your product or services - whatever the mark applies to. Other decisions that have to be made is how will your trade mark registration be worded in relation to the specifications that are used.

The specifications essentially are the words that you use for your trade mark protection that give it the breadth of protection. You're always walking a fine line in the words that you’re using in your specifications, between using words that will adequately protect your business, both for what you were doing now, and for what you may be doing in the future, but also not being too broad so that they raise the possibility of someone opposing your application because they have goods or services that are similar to some of the things that you’ve describe, or you having other marks cited against you in the application process.

There’s other considerations in the application process like, for example, whether or not you choose to register the word itself, or the logo, or a combination of the word and the logo. Those considerations or the answers to those questions come back to an assessment of what it is that you’re looking to get out of the mark in the future and what other marks are around at the point in time of your registration. There’s lots and lots of questions that feed into trade mark registrations that quite frankly can be very hard for you to understand if you don’t have specialist expertise in that area.

Can I make money out of registering my trademark?

Alright, so number seven: can I make money out of registering my trade mark? The answer is absolutely yes you can. You can make money out of registering your trade mark, if you then decide to do things to commercialise your mark. In fac,t I must say, that making money and saving money are also sometimes one and the same thing. Trade mark registrations can help provide a return to you on the investment that you spend in them by:

1. Protecting your marketing spend by giving you protection of that brand, like we talked about before;

2. Protecting you against legal fees that might be thrown away if someone attacks you on the basis that you don’t have that trade mark registration in to protect your business;

3. You can also get a return on investment out of your trade marks by commercialising the marks. So say, for example, you might in the future consider things like licensing the mark if there’s various applications for the use of the mark into the future if it’s built into a brand;

4. And finally, having a registered trad emark can often help with the sale process of a business because it shows that you have protected your intellectual property.

Five ways you can make money with your trade mark.

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Someone is using my name on their website or in the url or as a metatag can I stop them and would trademark registration help?

And finally, the last question that we're going to tackle today: someone is using my business name on their website or in their URL or as a metatag, and can I stop them and would trade mark registration help? The answer here is yes, absolutely. Trade mark registration can be helpful in this process, if someone is misusing your mark as a mark in their goods or services. That means, if it’s a competitor that’s using your registered trade mark on their website or as a URL or as a metatag, then absolutely we can use this trade mark registration as a way to potentially stop that sort of activity.

That’s our round up today on trade marks, the frequently asked questions. Just as a reminder, the things that we spoke about today is:

  • Do you really need a trade mark registered?
  • You have a domain name a business name, a company name or all of the above, do you still need a trade mark registration?
  • Whether or not you have a name that is capable of being registered?
  • What to do when you have a generic name as your mark that you’re using at the moment and how do we go about choosing names that are less generic into the future?
  • Whether trade marks are expensive or not;
  • We talked about whether trade mark registrations are something that you can do yourself or through people who are generalist rather than specialist;
  • How you can get a return on your investment out of registering your trade mark;
  • And we talked about using your trade mark in the instances of stopping competitors from using your marks on their website in URL or as metatags.

So that’s it. That’s a round up from today. Thanks so much for tuning in!

Hopefully you found it really useful. If you’d like more information on this topic, just head over to our website at talkinglaw.com.au where you can download some information about this area. Through that website you’ll also be able to download a transcript of this podcast episode if you’d like all of these frequently asked questions in more detail.

You’ll also find details of how to contact our lawyers at Aspect Legal if you’d like help with any of the items that we covered today. And finally, if you enjoyed what you’ve heard today, please pop over to iTunes and leave us a review. We’d be most grateful. As I said at the beginning of the podcast, if you have any questions that you would like answered, whether or not that’s in relation to trade marks or any other general commercial areas, please pop over to our website or through our show notes and leave us a message about the questions that you’d like answered and we’ll see if we can tackle them in another future episode.

Wonderful! Thanks for your time. Bye!