As we approach the end of the financial year, and as you’re booking in your planning sessions for the coming year, you do not want to forget one of the most important items – your brand protection. Today we will discuss the importance of regular trade mark reviews. We have onboard Aspect Legal’s very own trade mark expert, Grace Yi to enlighten us with why you need to regularly review and maintain trade marks, when to do this and the steps to achieve this.
- Why are we talking about this?
- Brand protection needs to be reviewed regularly
- The risks and issues when you skip your trade mark review
- Why should you make sure your trade mark registrations are active?
- Examples of issues that might arise when you forget to review your trade marks
- When is the best time to review your trade mark protection?
- Always remember that this is an area of changing law
- What do you need to do?
- Top tips to take away
In this episode, we talk to Aspect Legal’s very own trade mark expert Grace Yi about the importance of regular trade mark reviews. Grace, along with our host Joanna Oakey, dive into trade marks and why you should never just set-and-forget.
At the beginning of their discussion, they talk about how it is important to continually and periodically turn your attention to your business and consider your trade mark protection because things change over time, and you might end up with gaps that you’re unaware of. After that, the discussion turns to when to consider a review, Grace and Joanna give examples of when it may be the best time to consider trade mark protection for your business. Grace also shares some simple and practical steps for you to properly maintain your business’ trade mark protection.
Connect with Grace Yi
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Joanna: Hi, this is Joanna Oakey here and welcome back to Talking Law. A podcast proudly brought to you by our commercial legal practice, Aspect Legal. Now today we have on the show one of our perpetual guests because she provides so much useful information. It’s our head of trademarks, Grace Yi. Grace, welcome back. To the show again.
Grace: Hi Jo, it’s good to be back.
Joanna: It is good to have you back. Because today we’re talking about a really important topic. I know perhaps I say this every time but this time, it’s even more important because we’re digging into here the importance of regular reviews with trademarks, the whole, don’t just set and forget. And the reason that we’re doing this is because we have trademarks that are coming up now that we have registered over a decade ago. Right, Grace?
Grace: Yeah, absolutely. That’s a long time.
Why are we talking about this?
Joanna: I know, right? Even more. And so, you know, we have so many clients that we’ve worked with over the years, and we have so many trademarks. And now going back, you know, one and a half decades of registration time that we start to see some patterns emerge. And we start to see some of the issues that occur with trademarks that have been registered at one particular point in time, but where changes have occurred over time. And you know, where I think what has happened notwithstanding that we keep providing lots of this information. People forget businesses forget that trademarks aren’t just like, let’s register this today and then we can just leave it forever and assume that’s going to be fine. It’s one of those things, like almost everything else in your business that requires maintenance and review. So I think that’s why we’re talking about it. What are your perspectives here Grace?
Grace: Yeah, I totally understand why it can fall off the radar. And I guess, I guess we want to come from the point of view of we understand why it happens. It’s one of those things where at the time that you go to protect it, you think, Oh, this is so important. You understand it, and then you go to protect it, we protect it, we help you in that process. And then it’s just so easy to get caught up in actually running your business that I’m looking at brand protection gets left behind. And it’s something that you really need to have as a regular part of running your business that you turn your attention to it. And it doesn’t have to be hard. It just has to be regular.
Brand protection needs to be reviewed regularly
Why should you make sure your trade mark registrations are active?
Joanna: And actually we’re talking about trademarks at the moment, but it just reminds me I really need to we need to talk more broadly as well about there are so many things in business from a legal perspective that do require regular review. And let’s call it when we say regular we don’t mean monthly, we mean more like an annual review. But you know, businesses generally, well, some businesses are generally very good at sitting down. And you know, we come towards the end of the financial year, beginning of a new financial year, businesses are very good at sitting down and saying, Okay, let’s plot the course the way the business itself is headed over the next 12 months. Let’s look back over the past 12 months and work out what worked, what didn’t, let’s recalibrate and let’s work out where we’re going from here, but they don’t do that with the legal environment, you know, and trademarks, we’re talking trademarks today. But this relates to a lot of different areas of the business from a legal perspective. But of course, we’re talking about trade marks today and maybe why don’t we start with what if they don’t? What are some of the risks? What are some of the issues that were in arise? Let’s talk about those. I think that would be really useful and instructive. For people to hear to understand why we are insisting on this regular review.
Grace: I think it helps to talk about it conceptually. And if we think about your trademark registrations as being like armour, it’s something that protects you. It’s something that you can use if you want to go on the offense. And over time as your business grows, as your business changes, that armour might not be protecting you in the right way. You might have grown bigger than your armour.
Joanna: Maybe your ankles sticking out now.
The risks and issues when you skip your trade mark review
Joanna: Right, so if you got some bits exposed. So really, actually As your business changes and evolves over time, we’ve got to make sure your armour is growing with you. It’s really about checking in once a year, making sure that you know, turning your attention to some of the things that we’ll talk about how the things that we’re going to raise to alert you to and where are the bits where now your business has changed and grown, and we need to make sure your armour keeps up because your armour is alive. The trademark registrations are leaving legal protections, and we need to make sure that they’re staying active and appropriate and sufficient.
Examples of issues that might arise when you forget to review your trade marks
Joanna: Yeah, and let’s just talk about some hard examples as well. You know, things that we say quite regularly, and we’ll go through that soon and more of an in-depth list of what are the sorts of things but just focusing on some examples right now, you know, things that spring to mind. For me are businesses were just as simple as they’ve got a registration for a logo and the logo looks different over time. They’ve tweaked the look and feel of the logo. So that’s just a super simple example. Right? But we see that a lot.
Grace: Yeah, we do, especially if the only protection they’ve got is a registration for the logo.
Joanna: Yeah. And it might also be that they have word protection as well as logo, but the logo itself is so distinctive and has, you know, maybe even become more important and distinctive over time that they want to ensure that they have this ongoing protection for how it looks in its current form. And but they’ve forgotten about the trademark component in terms of protecting that. And I guess, you know, some of the other issues that we see crop up very regularly are where businesses changed some of the goods and services that they provide under the mark and over time, and they’ve forgotten about the implications with trademark registration. So we certainly see this one a lot too, right?
Grace: Yeah, absolutely. So your goods or service provision might have expanded and grown quite a lot. So now you’re providing much more than you did at the time that we did the registration. You’re, you’re definitely exposed to the extent that it’s outside the scope of your original registration.
Joanna: Yeah. And then, you know, some of these issues, you know, we see them because clients will come to us and say, you know, we want to take action against a competitor who’s using a mark like ours in relation to this type of good or service. And we say, let’s take a step back here, you don’t actually even have protection in that area. So now we’ve got to go and step back and try and remedy some of these issues, which in some instances, if there’s a fundamental enough difference can be as exposed as if you hadn’t had a trademark at all, you know, in some of these areas, right. And people just forget that. And then the other one, there’s so many examples that crop up, but just the last one I’ll throw out here. The other example that I guess we see from time to time is the development of new brands. And getting that the importance of, you know, protecting brands that you’re using…
Grace: Yeah like new products, new subdivisions, new service areas..
Joanna: Exactly and it sometimes occurs if businesses have come to us when they’re quite small. And what they looking at when they initially come to us is protection for that main brand, you know, that might be the business or the company name that they run under, and that they have that main brand. But then over time they work out, they learn how to productize their services, or they learn ways to, you know, create branding around elements that they’re providing, but they forget that there’s a trademark registration element to these that will really help them protect their marketing spend. So that’s, I think one of the other main ways that there are so many more, this is the beauty of our job, Grace, we get to say lots of different stories over time. Okay, so we’ve talked about some of the issues. We’ve talked about why so let’s talk about maybe let’s start with when. So as we’ve said before, Really, this is something that you should incorporate in an annual review process. But are there other points grace, maybe we’ll talk about what these points are the bigger points for businesses in considering thinking about reconsidering their trademark protection as a whole.
When is the best time to review your trade mark protection?
Grace: So we’ve touched on a lot of them already. But something I would add is if your business has expanded overseas, that’s another…
Joanna: Or you’ve suddenly come up with the idea that now in the future plans you’re planning as you’re doing this, you know, New year, new financial year planning, you think international markets might start to creep in. And I am so glad you raised that because that we really should have had that as another one of the main issues we’re talking about, because it’s such a forgotten issue, that when you’re launching into a new market, your restarting these vulnerability that needs equivalent to when you’re starting in the Australia market under a new brand,
Grace: Absolutely, yeah. So I guess there’s a common maybe not so much misunderstanding but just lack of knowledge in the fact that trademark registrations are done on a country by country basis. So really, when you do enter a foreign market, you’re entering a new trademark market, you need to make sure that your use of your brand in Australia isn’t infringing on someone else’s rights in that country. So it becomes a bigger question as to whether the branding that you have here can be used globally. And you know, we always come back to the case of Burger King.
Joanna: Yeah, I love it. Why don’t you run through it again. If our listeners haven’t heard some of our other fabulous podcast talking about this.
Grace: It’s just one of those classic examples of a well known brand not being able to use the mark that they have in their home country, which is the US and they had to rebrand in Australia because the name Burger King wasn’t available here. They Had to rebrand as Hungry Jack’s. So that’s a question that an Australian business may face.
Joanna: I just want to add some… I love that you throw in these examples Grace. And but because we can’t necessarily talk about the names, we can’t talk about the names of our clients who’ve gone through some of these similar issues but we can tell you sitting here at the coalface This is something that, you know, comes up for us, whether it’s organizations that are looking to expand their reach into Australia and then suddenly finding that they they can’t get that brand here in Australia, whether it’s an Australian organization expanding internationally, and it can be a real pain in the backside to have to have one brand for Australia, another brand, internationally. But the point is, it’s better that you know that first so that you don’t face an infringement action in the other jurisdictions with which you’re operating in. So that’s the first thing so it’s protection but the second thing is also trademarks are in different jurisdictions the way trademark registration And the rights relating to it can change. But generally speaking, trademarks are about timing. And you know, the earlier you get in the better. So the point is, if you’re looking to expand into other countries, you don’t necessarily have to be there right now, in order to get your trademark registrations lined up so that you have that protection and umbrella when you start operating in those other countries.
Grace: And we can help you navigate that because it’s it can be a bit tricky clients when they’re at the stage have come to us sometimes they’re not ready to expand or they don’t have the budget to expand their main market is here or sometimes the case is that the main market is a foreign country, but whatever the case is, we need to talk about it early so that we can plan ahead of expansion and you need to know if there are no obvious competitors over there that are using potentially infringing or similar marks because you just don’t want confusion.
Joanna: Yeah, absolutely. And, you know, we deal with a number of matters, run at moment with some really strong brands. That is really suffering from the issue that whilst they started, you know, really good brands started using them early suffering from the fact that they haven’t registered in the markets that they’ve been operating. And that just creates all sorts of pain. And of course, we’re here to help you out with it, but we’d like to help you avoid the pain in the first place.
Grace: Absolutely, avoided it as much as you can.
Joanna: Okay, so we’ve talked about when if you’re thinking about expanding internationally, so what else one of the other trigger points Grace?
Grace: So we haven’t talked about this, but it’s a situation where you’ve got another entity using the mark other than the owner of the mark. So yeah, it’s a question that we need to think about if you’re actually allowing other entities within a group of entities to use your mark.
Always remember that this is an area of changing law
Joanna: And this can come up for you, you know, one of the classic IP asset holding entities or just investment entities, asset entities. There’s a lot of things that need to be thought through from that perspective. And in fact, this is an area of changing the law. This is something that has changed in Australia, quite recently, relatively recently. So that is something that will come up in the annual review as long as you’re talking with people who know what they’re talking about in relation to trademark. So that’s if you’re holding a mark in an asset holding entity, then that is now is the point to be reviewing that and the rearrangement around that as well given some changes that have been happening recently. So that’s a really good point, Grace. And so we’ve talked about providing new products or services, I guess to a degree you know if your business has grown, and I guess we talked about that from the issues in relation to perhaps adding different goods or services to what you had originally provided under mark. What are some other examples?
Examples of issues that might arise when you forget to review your trade marks
Grace: so it might be the case that when you first came to us and we did trademarks for you, you may have been a bit limited By your budget at the time, which Yeah, you know, we’re sensitive to what we understand. So we may have gotten you the best protection, we can get you for your budget. But as you grow as your budget grows, it may be time to now pour some more resources to make sure that your armour is more comprehensive. And and and this is something that should be picked up periodically.
Joanna: Brilliant. And then I guess adding to one of the other things that we’re talking about in relation to the change of logos or change brand to a degree sometimes the the words themselves slightly change over time. And so those points of the points that you should think about trademark registration again, and they’re also great points to refresh the totality of the you know, the clauses that we’re predicting in the specifications, the words that we’re using for protection, because it might be that something broader is now more appropriate or indeed something more narrow depending on what’s going on, but it’s not just the registration is you changing your logo or the way you using your brand might also be an infringement issue, you just need to make sure that the changes aren’t too similar to someone else’s registered mark. So it’s not just about protection via registration. It’s also about protection against infringement action.
Grace: Absolutely. Yep.
Joanna: Great. Okay. All right. So they’re the sort of points in time, over and above just a regular annual review. So what do we then need to do? What’s your tips for organizations, I guess, taking away from this podcast, other than the obvious one, which is make sure you do an annual review. And obviously, we can help you with that. And we’re going through a process now of assisting all of our current clients to go through this review process. But if you’re listening to us, you’re you’re not a client that has worked with us in brand protection in the past, we can assist but if not, then you should at least sit down and do this review with someone who really understands trademarks. So that’s the first thing but What else? Grace?
What do you need to do?
Grace: Yeah, so I guess the main, if there’s only one message you take away from today’s podcast, it really is as simple as understanding how important it is to do a regular review. And if it’s too hard, ask us to help you. That’s the most simple takeaway message. But the dot points of what we would actually need to turn our attention to is the simple steps of number one, it doesn’t have to be complicated. Just keep a spreadsheet of all your trademarks with the details. And that’s, it’s a document that you can come to, it’s a living document, it needs to be kept updated and current. And really, that’s what we turned to make sure that we can compare what’s on the register to what you’re actually doing. So that’s the first tip. The second tip is to actually set a diary entry so that we know how often we’re going to come to do this. So it might be something that you do internally, or it might be something that you booked in with us so that we can do it together. But really, you’ve got to have a periodic setup. So that It’s not just done once it’s done annually.
Joanna: And good news. If you’re a client of ours in brand protection, we’ll be emailing you once a year to remind you of this periodic protection. So yeah there you go, but anyway, if you’re not, then he’s a free tip for you make sure you put in your calendar.
Top tips to take away
Grace: Yeah, and then it’s just it’s literally about considering where the gaps are in your armour. So where have you grown? Where have things changed compared to what’s on the register and then thinking about the best way to go about protecting that. So that’s really where we think about the strategy of trademark protection. I guess it’d be a bit hard to do if you don’t if you’re not familiar with the process, but that’s, that’s where we step in and can make that all very simple for you. Another very important tip is to keep an eye on the market. It’s really important that you do this. You need to keep an eye on anyone that’s coming too close to your branding. Because the really the onus is on trademark owners to enforce their trademark rights, and no one else is going to do that for you. And the risk of not doing that is of course, that there’s a risk of market confusion, there’s a risk of dilution to your trademark rights, you’ve really got to stay on top of this one.
Joanna: And I just want to call out, you know, some objections that, that sometimes we hear I was having a conversation with someone just a couple of days ago, actually, who was an advisor to business and he said, yes, you know, we suggest to our clients that, you know, there’s no real point chasing down or taking action against competitors, who use a similar brand, because, you know, if you take it to court, it’s gonna cost you a fortune. I said, you know, we lawyers, obviously, I take a different perspective, but I fundamentally disagree from a commercial perspective completely understand people don’t want to throw money needlessly at litigation, but that’s not we get almost 99% of our metas to resolve without ever having to consider litigation. Don’t we Grace? I mean it is about you know, taking action doesn’t mean filing in court, there’s a lot of steps that can happen. And if you have a trademark registration, you have the ability to assert your rights to, you know, we send cease and desist letters, we take action that makes infringers aware of the risk that they’re running and we have a really, really high success rate in getting compliance. So just you know, I want to tackle that elephant in the room. It’s not about spending heaps of money in legal or in litigation. It can be quite a simple process but what you do need is you do need your protection properly in place behind you.
Grace: I guess the clients now who are very savvy with their IP and trademark protection are the clients who have either tasted the pain of having a trademark infringement issue or been on the receiving end. So it’s once you’ve understood what the issue is I think our clients, you know, they come to us they’re very active.
Joanna: Yeah, they just get it. Yes, but what we don’t want is for you know, and this is, as I said, a bit of a call to arms, we don’t want you, as a listener to have to go through the same pain as long as had in order to learn the lesson. We’re trying to share the lessons so that you don’t have to learn from experience.
Grace: How important is your brand to your business? That’s what it’s really about. Everyone identifies you by your name and your reputation and your it’s all caught up in the brand. So yeah, if it’s worth protecting to you, it’s worth doing this annual review.
Joanna: Yeah. Which can be so simple. You know, we just we’ve gone through a number of tips here. Like in reality, this could just take one hour a year.
Joanna: And any final sort of tips here in relation to what we should be thinking about or looking at?
Grace: Hmm. It’s worth keeping an eye on the trademark register, yeah, for anybody that might be lodging marks that are too similar to yours. So so the trademark examiners are there with applications to catch the obviously similar ones. But sometimes people are able to get through on whatever grounds and it’s really up to trademark owners to keep an eye on that soon, in case there’s anything you want to oppose.
Joanna: And that’s where, you know, because of the timing, between trademark application and acceptance is a minimum of you know, about seven and a half months, you know, if you were going to be doing this properly, you would be having these review at least once every six months, you know, because in that case, then you can pick up what’s happening on the register in a time period enough, but if you’re only doing it as an annual thing, well, at least that’s better than nothing. And that gives you the opportunity to pick up anything that might be in that sort of seven and a half month window. Great. Okay. All right. Well, look, I think that’s a really good overview. Any last tips that you want? To throw to our business owners out there Grace?
Grace: Yeah one last one, it’s about keeping your registrations renewed because they are up for renewal every 10 years, which is such a long time. Yeah, what happens in 10 years, but trademarks are one of those special types of intellectual property that are renewable indefinitely. So really, it’s up to you to keep it alive. We contact our clients when they’re up for a renewal but you’ve got to make sure that that they are renewed.
Joanna: Absolutely love it Grace. And look, the one thing I’d say is I truly believe that trademark registrations are one of the cheapest types of business insurance you can get in your business. I mean, what other insurance is so cheap for a 10 year and then you know, effectively indefinite, you know, protection, all you have to do is set aside time just to come back and maybe spend an hour on it a year and our a year. I mean, it’s not a lot. And you know, and there are some people there by bike for example, as Here it is. Aspect Legal Luke can help run you through that process to make sure you know what you’re looking at. It’s no large investment in time. It’s a very cheap and simple way of providing that ongoing protection for your business and the scenes that represent you in the market, which is your brand. So you’re nuts if you don’t do it. That’s all we’ve got to say on the matter. What do you think Grace?
Grace: Yep, absolutely. And you know, like you said, it doesn’t have to be hard. We’re here to help you. We’ll, we’ll keep it simple. You just have to think about the questions we’ll bring up and we just do it every year.
Joanna: Yeah, brilliant. Okay, look wonderful. I just want to say massive thank you to you the listener for your ongoing support of Talking Law. That’s it for this episode. If you’d like to hear more about it, then just head over to our website at talkinglaw.com.au where you can download a free transcript of this episode. If you are just one of those people who just like to read through it all in detail. We have you covered. We have a transcript there for you. And through that website, you’ll also be able to contact Grace and our other brand protection legal eagles if you’re not a current client and you’d like to have a little chat to us about how we can assist with trademarks or a trademark review, or indeed if you are a current client and you want to work out how you can book yourself in for a trademark review. And that’s it. I hope you enjoyed what you heard today. If so, please pop over to Apple Podcasts and leave us a review. Well, you’ve been listening to Joanna Oakey and Grace Yi on Talking Law a podcast very proudly brought to you by commercial legal practice Aspect Legal. See you next time.
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