What this means is that someone else can use or even trademark your business name or product name if you don’t already have a registered trademark in place. You will then most likely have to engage a trademark attorney to defend your ‘prior use’ of these words, demonstrating that you have been using these word/s consistently for a longer period. Or even to demonstrate ‘passing off’ if someone else is deceptively using the goodwill of your brand name. This process can be costly and time-consuming, something most companies would prefer to avoid.
What can I trademark?
You can trademark words, phrases, letters, numbers, sounds, smells, shapes, packaging, colours or a combination of these. The most common ones are:
- Brand names
- Product names
- Logos (visual representation)
- Graphics
- Packaging
- Tagline
What are some of the trademark rules?
The following examples are not conclusive by any stretch of the imagination. And like most legal things, there can be exceptions to the rule. The best alternative is to consult a trademark attorney.
- It can’t be a surname. Having said that, the most famous exception to this rule is “McDonalds”. They were able to prove substantial prior use.
- It can’t be a descriptive – with word/s which are relevant to that product or service (e.g. the words “Sydney Marketing” or “professional marketing” would probably prove difficult to register, because other companies in the field of marketing should have the right to use those descriptive phrases).
- It can’t be a commonly used image which relates to your goods/services (e.g. a currency exchange institution would have difficulty stopping competitors from using a dollar sign).
- It can’t be a common combination of numbers and letters (e.g.H2O).
- It can’t be a flag, emblem or official sign (e.g. the Olympic rings).
- Your trademark is only valid in countries in which it’s registered.
If you’re starting a new business or company:
Consider registering your business name as a trademark. A trademark can be renewed every 10 years.
- You can check if the business name is available with ASIC (but remember that this has nothing to do with trademarks).
- Search the trademark database:
- You can perform a free search of the Australian trademark database yourself, but don’t jump to conclusions. Just because you don’t find a conflicting trademark doesn’t mean that a trademark examiner or third party won’t object.
- The trademark office provides a paid $40 search which will advise of existing and pending trademarks which only takes 1 day. But remember that the trademarks office won’t provide legal advice.
- Your best alternative is to consult a trademark attorney.
- If you invent a word/s which are unique then this might make it easy for you. But just remember that you may not be able to register deliberate misspellings or phonetic variations (e.g., “marceting” sounds like “marketing”).
If you have an existing business or company:
If your brand name isn’t already registered as a trademark, then contacting a trademark attorney would be a wise move. If there are reasons you can’t register your name, then it might be worth protecting your logo (the visual representation) anyway.
Of course if you don’t have a logo which is worth protecting, then you should consult a reputable graphic designer to get your logo designed (or even revamped).