ROI – Unlocking the ‘Returns’ on Trade Mark Registration
As the proud owner of an SME, you’ve probably been told plenty of times to register a trade mark for your business name or other brands. You might even have a bit of an understanding about the process, or what makes a “strong” trade mark (distinctiveness, distinctiveness, distinctiveness!)
Yet you still don’t have a registered trade mark. What’s holding you back?
Maybe you don’t completely understand whether it’s worth all the fuss. I hear you say:
“What’s the ®OI – what do I actually “get” from registering a trade mark?”
Many people assume that simply registering a company name, business name or domain name gives exclusive rights to that name when only a trade mark registration has that effect.
First, it’s important to understand the difference between a trademark and other name registrations. There are different regulations and bodies that administer and govern business name, company name and domain name registrations. This is because each name is for different and distinct usages.
- Company name: this is the name for all legally incorporated entities. You can choose to trade your company under a different name to your registered company name.
- Business name: this is your registered trading name.
- Domain name: this gives you an exclusive right to use it as the address of your website. However, registering a domain name does not give the owner any exclusive rights to that name apart from a website address.
A trademark registration gives you, the owner, the exclusive right to use or license the use of the trademark. This is different than a business name, company name or domain name registration, which is confined to a specific usage. With a valid trademark registration, you can stop other traders from using the same or a similar name for the same or similar goods or services as yours.
A registered trade mark may provide its owner with a defence to an allegation of trade mark infringement raised by a third party.
Section 122(e) of the Trade Marks Act 1995 (Cth) provides a defence to infringement proceedings such that an alleged infringer will not have infringed a trade mark where they’re simply exercising a right to use their own registered trade mark.
If you’re simply using your own trade mark as registered, you don’t need to worry about being on the receiving end of a nasty cease and desist letter!
Registration of a trade mark can deter third parties from using names or brands that are similar or identical to your registered mark, for products or services similar to those covered by your registration. By using the ® symbol, you put other traders on notice of your registered rights. Importantly, a registered trade mark can be easily identified by potential competitors who conduct appropriate due diligence (i.e. search theofficial Register) before settling on a new name.
Once aware of your trade mark registration, a third party may be inclined to choose another name rather than risk infringing your rights!
Australian trade mark registrations can form a solid foundation for seeking registration of a trade mark overseas.
The latest Australian Intellectual Property Reportshows that in 2017, Australian resident entities filed 18 356 trade mark applications overseas, with New Zealand the second-most popular overseas designation after the United States.
One of the most cost-effective ways to get overseas trade mark protection is via the Madrid Protocol system. This is a centralised filing system where an application is filed with the World Intellectual Property Office (WIPO) who then send your application to the various designated Trade Marks Offices for examination. If no objections are raised, it may not be necessary to engage foreign Associates, which can represent a significant cost saving. Australian businesses must base their Madrid Protocol application on a corresponding Australian trade mark.
A registered trade mark can be licensed for use by a third party (such as a franchisee), and appropriate controls around use of the trade mark can – and should – be attached to the licence agreement. A trade mark licence can be recorded on the trade mark register (although this is not compulsory), giving the licensee rights to institute legal proceedings in the event of infringement.
A licence agreement will tell your licensee exactly how they’re allowed to use your trade mark, to ensure your brand is not tainted. Brand consistency is key!
As the owner of a registered trade mark, you can bring an action for trade mark infringement without having to submit evidence of the extent of the reputation of the trade mark.
Although it’s not mandatory to register a trade mark, it’s generally much more difficult and expensive to protect a trade mark if it is unregistered.
Did you know that the trade mark registration system was originally introduced because it was plain to see that common law actions were a cumbersome and costly last resort for businesses to stop unauthorized use of their marks?
Trade mark registration removes the requirement to prove a brand’s reputation. A trade mark registration is prima facie evidence of the validity of the registration and the rights conveyed by the registered trade mark.
Registered Australian trade marks are rarely subject to geographical limitations. On the other hand, the protection afforded by unregistered or common law trade marks is geographically limited to wherever the brand can be shown to have a reputation. Once you have a registered trade mark, you no longer need to prove the breadth of your reputation to enforce your brand!
Trade mark registration creates an identifiable intangible property asset, which can be bought or sold.
A registered trade mark can be transferred separately and apart from the remainder of a business. You can sell off the name or logo related to a single product or service line and hang on to the rest of your business. The same is generally not possible for unregistered or common law trade marks, which are usually only transferred with the rest of a business and its associated goodwill.
As an identifiable property asset, a registered trade mark may be used as security and may have security interests recorded against it. The Personal Property SecuritiesRegister (PPSR)is a central Australian register for the registration of security interests in personal property other than land and fixtures. Claimed interests can also be recorded on the official Trade Marks Register. Basically, if you need some cash for infrastructure improvements, you might be able to use your trademark as security.
LEGITIMACY AND SUPPORT
In the age of online shopping and marketing, it’s easier than ever for dodgy operators to pop up all over the place. Having a registered trade mark shows the legitimacy of your goods or services, and that you take what you do seriously enough to protect your valuable brand.
In addition to the Australian Border Force (ABF) helping to enforce your trademark rights (see below), third parties such as Google and Amazon also recognise and help to enforce registered trade mark rights.
Registered trade mark owners whose trade mark appears on products or packaging can enrol in Amazon’s Brand Registry, which gives trade mark owners greater influence over product listings on Amazon. Brand Registry also gives members access to automated protections which use information about registered brands to proactively remove suspected infringing or inaccurate content.
Registered trade mark owners concerned about counterfeit goods harming their valuable brand reputation and impacting profits can take steps to stop unauthorised importation.
The ABF helps to enforce trade mark rights through the Notice of Objection Scheme, under which the ABF can seize imported goods that are suspected of infringing trade marks. A Notice of Objection can be lodged with the ABF by concerned brand owners and provides the legal basis upon which the ABF can seize goods intended for commercial purposes and which are subject to customs control and appear to infringe your trade mark rights.
As an extension to the Brand Registry program (see above), Amazon is also working to overcome counterfeiting using several user-controlled tools. Dubbed “Project Zero”, this new program utilizes a suite of automated protections made possible via machine learning, combined with a self-service counterfeit removal tool and a new product serialisation service.
A registered trade mark ensures an enduring monopoly of one of the most valuable assets of a business. Provided the renewal fees are paid, which are due every ten years, and the trade mark continues to be used for the goods or services for which the mark is registered, the registration may stay in place forever. The oldest remaining trade mark on the Australian register was filed in 1906!
Unlike patents and design registrations which have a limited lifespan, registered trademarks tend to appreciate in value the longer they are continually used, and the registration maintained.
HOT TIP: It’s important to use your trade mark as registered. If you change the look of your brand, or the goods or services you apply it to, you should consider updating your trade mark registration. If you don’t, you may find yourself subject to removal proceeding.
So, with all these benefits, can you afford not to register your trade mark?