Trade marks are deeply ingrained in our daily lives, yet it’s surprising how little many people know about them. What’s even more surprising is that even though trade marks are a crucial aspect of many businesses and can have a huge impact on the balance sheet and bottom line, they’re often misunderstood (and ignored) by business owners.
This article unpacks some of the common myths about trade marks and provides guidance for business owners on what they should be doing to protect their valuable intellectual property.
Common myths about trade marks
Myth number 1: I own a small business. There’s no need to register a trade mark.
Fact. Trade mark registration is as important for a small business as it is for a large corporation.
In Australia, it is possible to accrue ‘common law’ rights over a particular mark (such as a business or brand name, logo, slogan etc.) that hasn’t been registered as a result of its prolonged and extensive use. However, you would need to establish significant goodwill and reputation in the mark to enforce rights against other traders – a process that can cost substantial time and money, with no guarantees.
It’s important to note that should someone apply to IP Australia to have a trade mark registered, the authorities will only run checks for similar marks against those that are already in their system (i.e. pending applications or trade marks that have been registered). IP Australia is not obliged to investigate the possible existence of unregistered trade marks which may be confusingly similar.
In short, if you own a small business – or any size business for that matter – you need to register your trade marks in order to be sure of that protection. It’s the only way to properly record your ownership of a name, logo or other element you use in your branding, and to ensure that you don’t waste time and money building a brand that you may be forced to abandon down the line.
What you need to know: trade mark registration is a key business imperative for businesses of all sizes.
Myth number 2: Registering my business name is the same as registering a trade mark
Fact. A registered business name is NOT the same as a registered trade mark.
If you want to trade your business under a specific name, you need to register it as a business name with the Australian Securities & Investments Commission (ASIC).
It’s an offence to carry on business under an unregistered business name unless you trade under your own name such as Mary Jones. If you want your business to trade under a name that is different from your legal name, or your company’s legal name, then you/your company have to register it as a business name via the ASIC website.
Registering your business name does not give you exclusive trading rights or ownership over that name, nor will it stop another person from using or registering a similar name. Trade mark searches should be carried out before registering a new business name to ensure the business name is clear to use.
ASIC will register a business name if it’s not deemed to be in direct conflict with another business. However, if you register the same business name that has already been registered as a trade mark (or which is confusingly similar), you could find yourself in a legal dispute down the line.
What you need to know: Your obligation to register your business name is not the same as registering a trade mark. There’s no obligation to register a trade mark. You should also always do a trade mark search before making a decision on a business name.
Myth number 3: Once a trade mark has been registered, the owner has exclusive rights in perpetuity
Fact: Registered trade marks operate on the principle of ‘use it or lose it’, plus they need to be renewed every 10 years.
Trade marks can be removed from the register as a result of non-use, or where the named trade mark owner never intended to use the trade mark in good faith. If an application is made by another party to have your trade mark removed due to non-use, you can defend your position by providing evidence of use. As with all matters relating to trade mark registration, assistance from an experienced trademark attorney is recommended.
What you need to know: You have a six-month grace period after the expiry date to renew your registered trade mark (late fees apply). You can also renew your trade mark registration up to 12 months before the renewal date.
Myth number 4: I can rely on IP Australia to advise me of any conflict with my registered trade mark
Fact: IP Australia is the body responsible for governing trade and registering marks in Australia but does not provide legal advice.
IP Australia will notify you if their examinations find trade marks similar to the one you are trying to register and they will also notify you and give you a chance to respond if anyone opposes the registration of your trade mark before it is registered. They will continue to communicate with the ‘address for service’ throughout the course of an application proceeding, or throughout opposition or removal proceedings but cannot advise you in relation to these matters.
What you need to know: It is good business practice to enlist the services of a trade marks attorney to conduct regular trade mark searches to ensure the integrity of your mark.
Myth number 5: I can self-manage my trade mark portfolio
Fact: The process of self-filing is relatively easy with IP Australia and it is possible to DIY your trade mark search and application process.
The reality is that there are potential pitfalls, and any mistakes, omissions or delays can be costly. Engaging the services of a trade marks attorney or IP lawyer takes the hassle and the risk out of the process and will ensure that you have optimum levels of protection for your brand and your business.
What you need to know: Enlisting professional help can save you time and money and will give you peace of mind that your valuable IP assets are in expert hands.
A last word on trade mark myths
A trade mark is a valuable balance sheet item as they can appreciate in value. Don’t let common myths and misconceptions jeopardise it. Get in touch with a professional who will talk facts, not fiction with regard to trade marks and who will give you the best possible chance to maximise their protection, value and potential.
