It takes time, investment, integrity and consistency to build a strong brand. At BrandMatters, we often talk to our clients about a brand being more than just the logo or brand name, however, your brand name or brand name used in a logo, can become the most distinctive visual cues for your brand.
One option to protect the value and longevity of your brand is trademarking. A trademark’s essential function is to distinguish goods or services of one company from another. They must therefore be of distinctive character and can’t just be descriptive of the goods or services sold.
The Australian Government’s IP Department defines a trademark as:
“A trademark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or any combination of these.”
As a branding agency, we always strongly recommend a full due diligence process is undertaken on any new brand name or logo. It confirms registrability and identifies any potential threat or infringement that may occur.
Trademarking in Australia is governed by IP Australia and comes under Trademark, Copyright and Australian Consumer Law.
Trademarks are registered under classes for both goods and services categories: 34 classes for products covering pharmaceuticals to furniture to food and drinks; and 11 classes of services covering telecommunications to auditing to freight transport.
Classes help expand the volume of trademarks currently licensed – identical or similar trademarks can be registerable once evaluated and confirmed that they are in non-competing industries, for example and hypothetically “Star Plumbing” or “Star Theatre”.
It’s best to avoid disappointment. Given the millions of brand names, logos and website URLs in the world, there is a slim chance the name an organisation has fallen in love with is available. Decades of trademarking, defensive trademarking (where organisations register variants of their trademarks) and proactive registration of every possible URL variant means brand agencies need to find inventive circumvents to create brand names that provide not only true market distinctiveness but also trademark registrability and URL domain purchase.
This provides a substantial challenge. So, what are some pitfalls to avoid from the start? There are some exclusions that can’t be registered:
The intent of copyright law is to ensure clear use of names, logos and other intellectual property where there are no conflicts. This process takes time. Once an organisation has submitted a trademark application, IP Australia provides the initial pass to proceed based on its own preliminary checks. The application then moves to a period of “challenge”, where other entities can put forth a case against registration of the pending trademark where they feel it is similar or substantially similar to their own. If the pending trademark passes the challenge period, the trademark can operate in the intended market and category with the legal protections in place for the trademark.
A registered trademark provides a brand with exclusive rights to use, license and sell the trademark, ensuring the brand is free of any usage issues within the target market and jurisdiction.
And this registration prior to launching in the market is critical. It’s tempting to take the chance and launch a brand without the trademarks being registered. And there might be many reasons for this. First mover advantage. Merger & acquisitions. Numerous other time pressures.
But launching into the market without registration is fraught with risk. The real threat is where, in the absence of the due diligence process, a brand’s name or logo are identical or substantially similar to that of another in the target market or an adjacent market, the market’s geography or another geography.
This opens the brand to the risk of legal recourse from the entities that own the identical or substantially similar trademarked brand name and logo. At best, the unregistered brand and branding will need to be pulled from the market. At worst, it can be argued as constituting misleading and deceptive conduct with inevitable legal ramifications.
Registering a trademark in any jurisdiction provides a brand exclusive legal right to use, license and sell within that jurisdiction for the goods and services for which it is registered. Where the rights are for one jurisdiction, eg, Australia, this is straightforward.
However, when brands enter international markets there are a number of other considerations beside ensuring distinctiveness and registrability.
It’s important to ensure from the outset that the desired trademark is registrable in all intended markets. Piecemeal registration, for example registering first in Australia and then in other jurisdictions, may result in availability in Australia, but non-availability in other markets.
A further consideration is that some names and logo marks are culturally specific, and don’t always translate as well in the context of other markets. With the availability of names restricted and the use of made-up brand names circumventing this problem, what may sound like a smart brand name in Australia may in fact sound rude, profane or embarrassing in another language.
Taking the time to conduct a full comprehensive search via IP lawyers is an essential part of due diligence in ensuring an intended mark can be deployed in all intended jurisdictions. Identical, substantially identical, mis-translations, cultural considerations and URL availability all play into the registrability of the desired trademark both in Australia and in other geographies. Best to avoid disappointment, and check from the start.
It is never too early to protect your brand with a trademark, especially when you are planning to invest significant funds in brand awareness and drive your brand positioning in a crowded marketplace. There are a number of resources available to find out more about trademarking – IP Australia is a great starting point. At BrandMatters, we build strong, unique, relevant brands that will become your organisation’s most valuable asset – so protecting this is vital.