How to trade mark a business name

Ensure your business is trade marked and not infringing another business’s trade marks

A trade mark identifies your unique business or product and distinguishes it from other businesses. In the past twelve months, many small and medium enterprises (SMEs) hastily moved online in response to Covid-19. However, with urgency some things are overlooked, including basic trade marks and domain registrations.

So how do SMEs go about trade marking business names, registering domains and avoiding possible future trade mark infringements?

The costs of trade mark infringement

Without undertaking the appropriate checks before registering your business and domain name, you could end up in a trade mark infringement situation similar to that of Indigenous clothing label Clothing the Gap, which was named as a play on words with the Indigenous health campaign ‘closing the gap’. US clothing giant The Gap issued a cease and desist order, failing to appreciate the link to the Indigenous health campaign, and after losing their battle in court, they must now undergo a costly rebrand to ‘Clothing the Gaps’.

So how can you ensure your SME doesn’t find itself in a similar situation?

Doing your trade mark due diligence

When expanding your SME online there are a few vital steps to secure your own brand trade mark and ensure you’re not breaching anyone else’s. You can use the www.business.gov.au name check tool. They also have a handy Trade Mark Assist tool. Include similar and alternative spellings, as trade mark infringement can be based on name similarities. The government also has a paid TM Headstart service that provides you with a comprehensive trade mark report. You can apply for your trade mark through this government service.

Do you have to trade mark your product or service?

According to the Institute of Patent and Trade Mark Attorneys of Australia (IPTA), registering your trade mark isn’t essential. There are common law rights you can rely on. However, registering a trade mark is advantageous because:

  • it will vastly simplify any infringement proceedings.
  • it is then listed, making it easier for others to avoid infringing on your trade mark.

What to do if you suspect you’re open to a charge of trade mark infringement?

Receiving notification that another business believes you are infringing on their trade mark can be intimidating. If they have taken the steps to contact you, it will usually be done via their own legal team. At this point, engaging a qualified professional to advise and assist you is essential.

How to establish if another brand has committed trade mark infringement against you

According to IP Australia, before taking legal action you need to prove that your intellectual property (IP) rights exist in law:

  • Ensure your IP right is still in force. Many rights have expiry dates. Make sure you’ve renewed your IP rights.
  • You need to be the owner of the rights, or legally entitled to act on behalf of the owner. This would be contractually documented and approved by the rights owner.
  • You need to prove the infringer’s product is a copy of the whole or a significant part of your product.
  • You also need to show the infringer made their product without your authority.

Avoiding trade mark infringement against other brands and your own

The simplest way to avoid a future trade mark infringement either against you or another brand is to undertake your due diligence. Registering your business trade mark will avoid problems down the line. It will also ensure your trade mark isn’t similar to other comparable products or services.

For complex or technical patents the process is typically more difficult and no less important, so seeking professional legal help is essential.

 

Any decision that affects your business has legal implications. Contact us today to help secure your business for whatever tomorrow brings.

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