So you've started your business, registered a business name and secured your website domain.
Have you protected your brand or business name?
Registration of a business name, or the purchase of a domain name, does not stop other people from using that name. To protect your business name and any logo or representation that you are using, you need to register a trade mark.
If you intend to grow or scale your business, brand protection should be at the top of your "to do" list.
This is for a number of reasons. Firstly, you want to ensure that your business name or logo is not similar to a business name or logo that is already protected or owned by someone else. Secondly, as your brand's value increases, competitors will try to mimic your brand and your offering. You want as much protection as you can get.
CAN you trademark your business name?
Sometimes businesses spend time and money building a brand which is owned by someone else. They may have registered a business name or secured a website domain name, but someone else has registered the business name as a trade mark.
Things can then get complicated.
Registering a business name does not give you ownership of, or exclusive use to, that name.
The registration of your business name as a trade mark (which can be a letter, number, word, phrase, logo, picture or any combination of these) gives you as the owner of the trade mark, exclusive use to that trade mark in the class in which it is registered.
While in certain circumstances trade marks can be removed from the register if they have not been used in the previous three years, this takes time, energy and money.
Consequently, it's important to conduct registered trade mark searches before you launch or grow your brand, to check whether someone else has exclusive use of the business name that you wish to register.
Remember when you are searching the trade mark register, that trade marks are registered in different "classes". If a name is registered as a trade mark in class 45 (Legal Services), but you want to use that name or brand to sell clothing, then you can register the same name as a trade mark in class 35 (Retail Services) or class 25 (Clothing and Apparel) (subject to other conditions).
Whether a trade mark is registered under class 25 or class 35 will depend on whether you are selling clothing that you have manufactured or clothing that other people have manufactured.
will a trademark adequately protect your business name?
As we have already pointed out, registration of a business name does not give you ownership of, or exclusive use to that name.
However, trademarking a business name may not give you the protection that you need if you do not register the trade mark in the correct class. As registration of a trade mark gives the owner of the trade mark exclusive use to the trade mark in the classes in which it is registered, if you don't choose the right class when you register your trade mark then you will not be adequately protected.
We used the example of clothing sales above, which can fall into either class 25 (Clothing and Apparel) or class 35 (Retail Services). If you are manufacturing and selling your own line of clothing (not someone else's clothing line) then registration in class 25 is likely to be sufficient to protect your trade mark. If you are also selling someone else's clothing lines you would also need to register your trade mark in class 35 (Retail Services).
If you get the class wrong, you cannot amend your trade mark registration at a later date.
In addition, trade mark protection only applies in relation to the specific goods and services that you have listed in your trade mark application. For example, class 45 includes legal services, security services for the protection of property and individuals, personal and social services rendered by others to meet the need of individuals. If I register my business name as a trade mark specifying legal services, the protection does not extend to security services.
Is your brand protected?
Your brand is more than just your logo or the name that you trade under.
Consequently, protecting your brand means more than just trademarking a business name and a logo.
While securing a website domain will not protect that name, if you wish to use your business name or trade mark as a domain name, you will need to ensure that the name is available before you register a trade mark.
The Australian Government provides a Business Name Check service which enables you to check whether there are existing business names that are similar to your proposed name and whether there are matching domain names available.
In addition, trade mark registration does not need to be limited to your logo or your business name.
If your products form part of your unique selling proposition, you may want to register a trade mark for each of your product names.
A search of the trade mark register for Boost Juice shows that Boost Juice Holdings Pty Ltd has registered trade marks for juice names including "All Berry Bang", "Strawberry Squeeze" and "Mango Magic".
All of these protections make it more difficult for a competitor to mimic your business.
Takeaways
- In this competitive environment you need all the protection you can get.
- Registration of a business name does not stop other people using that name.
- To protect your business name you need to register a trade mark.
- When trademarking your business name you need to choose the correct class or classes.
- Trade mark protection only applies in relation to the specific goods and services that you have listed in your trade mark application.
Disclaimer
The information in this article is general in nature and is not intended to address the circumstances of any person or other entity. Although we do our best to provide timely and accurate information, we do not guarantee that the information in this article is accurate or that it will continue to be accurate in the future.
