The concept of a “brand” is familiar to all of us. Your business name, slogans and logos are what distinguish your business in the eyes of your customers. You may think that simply because you were the first to use a particular slogan, or because you have registered your business name, you are protected against unauthorised use of your brand. In reality, however, this is not necessarily the case.

Below, we discuss our five top tips for ensuring that your brand is legally protected through the registration of trademarks.

1. Look Before You Leap

Trademarks largely operate on a ‘first come, first served’ basis. This means that the first person to register a trademark in relation to their business is the owner of that trademark, and can prevent others from using it.

It is therefore advisable to perform a search of the trademark register before making a final decision as to your business name, slogans or other distinguishing features of your business. Imagine a scenario in which you have been operating your business for months or even years, spent thousands on advertising and promotional material, only to find yourself faced with a lawsuit for infringing the trademark of a competitor you may never even have heard of. In the worst case scenario, you could be forced to change the name of your business and lose much of the goodwill you have established, or pay hefty compensation.

Even if you have been operating your business without trademark protection for some time, there is no cause for panic. However, you would be advised to perform a search as soon as possible so as to identify any potential liability, and get ahead of the problem by taking steps to mitigate your exposure.

2. Protect Your Business Name

If you operate a business through a company or even as a sole trader, you likely already have a registered business name. Many people are unaware, however, that registering a business name provides little or no protection against unauthorised use of that name by others. In fact, if your business name is similar to a registered trade mark of another business operating in the same industry, you could be infringing upon their intellectual property.

For this reason, it is important to perform an in-depth search for any conflicting trademarks, and to register your own.

Having your business or trading name protected by a registered trademark also adds significant value to the goodwill of your business, should you ever wish to sell. A registered trademark is a tangible piece of property that can be sold with your business or eve licenced to third parties in return for royalties, should you ever wish to expand or franchise your business.

3. Protect Your Slogans, Logos and Designs

Trademarks can be used to protect not only the name of your business, but also other distinguishing features such as any slogans and logos used to identify your products and services. Although you receive some degree of automatic protection from competitors attempting to ‘pass off’ their product as your own, the protection provided by a registered trademark is far more robust and easy to enforce.

4. Classes of Goods and Services

Once you have decided to protect your intellectual property by registering your trademark, that is not quite the end of the story. You will need to identify the types of goods and services your business will provide.

This is important because trademark protection is tied to particular business activities specified in your application. This means, for example, that you may not be able to prevent someone from using your trademark if their business is in an entirely different industry to your own. It is therefore essential to ensure that your trademark application contains an accurate description of the goods and services your business provides.

Keep in mind, however, that the more classes of goods and services you specify in your application, the higher your application fee will be. In addition, if you specify goods and services which you do not actually provide, your application or subsequent registration could be challenged by a third party.

So long as you provide your solicitor with an accurate description of what it is that your business actually does, they can assist you to strike a strategic balance by ensuring the greatest level of protection in the most cost-efficient way.

5. Seek Professional Advice

This article seeks to set out some of the key advantages of registering a trademark and provide a basic overview of the process. However, intellectual property law is complex, and there are many considerations and requirements set out here.

Rather than attempt to navigate the application process on your own, and risk seeing your trademark denied on a technicality, you would be well advised to seek the assistance of our experienced solicitors.

NB Lawyers are experts in trademark registration and other IP protection and commercialisation strategies. We are able to assist you every step of the way, from providing legal advice tailored to your individual circumstances through to preparing and lodging the trademark application itself.

Please feel free to contact NB Lawyers today for an initial consultation and quote.

Written by
Jonathan Mamaril
Principal & Director, NB Lawyers – the Lawyers for Employers
07 3876 5111
jonathanm@nb-lawyers.com.au

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