Trade marks: making the right choice
Trade marks are what distinguish one business and its products from another. In selecting a new trade mark, whether as the name for a business or just a new product, there are a number of important issues to consider.
Is it distinctive?
A trade mark should be distinctive. It should not merely describe the products being offered. Why is that? Because other businesses in the same industry may have a legitimate need to use non-distinctive words and phrases, and the law recognises their right to do so.
Calling yourself “Ringwood Plumbing Service” might tell customers exactly what you do, but other plumbers in Ringwood have a legitimate need, and right, to use similar phrases. The name “Ringwood Plumbing Service” therefore fails in carrying out the key role of a trade mark: distinguishing your business and products from those of other traders. The trade mark should be distinctive, not descriptive.
Is it available?
Sometimes, businesses come up with terrific trade marks, launch them, market them, and 6 months later receive a nasty letter from another business that had that trade mark first. This can mean the need to rebrand, or even the need to pay compensation.
This risk can generally be avoided by doing a preliminary search, prior to settling on and launch a new trade mark. A lawyer or trade mark attorney experienced in the field will know what to look for. Ideally, the search should cover a number of databases, including IP Australia’s trade marks database, ASIC’s index of company names and business names, an internet search using a search engine like Google, and even trade publications in the relevant industry.
If the trade mark is going to be used internationally, such searches should cover the relevant international markets where the trade mark will be used.
“Abandoned” trade marks
In considering the availability of a trade mark, particular care should be taken when adopting “abandoned” trade marks. If you think that you can gain a boost to your business from reviving an “abandoned” trade mark, then there is a good chance that the owners of the residual rights in that trade mark will object, particularly if the trade mark was formerly well-known or iconic.
If you are engaging a lawyer or trade mark attorney to conduct a preliminary availability search, it is important to let them know about any such historic trade marks, as they will not necessarily appear on current databases.
Suitable domain names
Domain names are crucial to modern marketing. If a suitable domain name is not available, this may be a deal-breaker.
Breach of copyright
Particularly when deciding on a logo or symbol to use as, or as part of, a trade mark, it is important that your use of this trade mark does not infringe anybody else’s copyright. Just because something is on the Internet does not mean that it is free to right-click and copy.
Illegal trade marks
Certain names and logos are protected by special legal rules. These range from the obvious, such as the Olympic Insignia Protection Act 1987 protecting Olympic insignia and the War Precautions Repeal Act 1920 protecting the word “ANZAC” to the more obscure, such as the Geneva Conventions Act 1957 which protects the Red Cross symbol, the Swiss flag, and various related logos. Special rules under the Environment Protection and Biodiversity Conservation Act 1999 also govern the use for commercial gain images of a Commonwealth reserve, which for example precludes the use of an image of Uluru. Again, a lawyer experienced with trade marks, or a registered trade mark attorney, should be familiar with these rules.
About the author
Nils Versemann is a senior lawyer and registered trade mark attorney at Moores Legal in Box Hill. His qualifications include a Master of Intellectual Property Law from the University of Melbourne. Nils regularly assists businesses in choosing, registering and otherwise protecting trade marks
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