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New year, new you? A trade mark guide for your business’s 2022 rebrand

Hayden Delaney, Steven Hunwicks, and Hannah Fas / 18 January 2022
7 min.
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Worthwhile read for: Business owner, Director, CEO, CMO

For many businesses, January is a time for reflecting on the past year, and reinvigorating goals for the year ahead. In our experience, the new year presents a unique opportunity to shake things up – and this may involve introducing new products, recruiting fresh faces, or undertaking a complete brand refresh. 

Once the champagne stops flowing and the creative juices start, you might find inspiration strikes and a new brand, product name, or logo is created.  

This guide by Hayden Delaney, Steven Hunwicks and Hannah Fas will make your brand refresh smoother than a makeover montage in a Hollywood movie.

Business names

If you are trading under a name that is not your personal name (as a sole trader) or your registered company name, you must register a business name with the Australian Securities and Investments Commission (ASIC). You can do this through your ASIC Connect account, or we can attend to securing registration on your behalf.  

However, don’t be as naïve as Brittany Murphy in Clueless – a business name registration does not provide any exclusive trading rights or ownership over that name. In simple terms, registering your business name will not stop third parties from registering the same or a similar name, or give you the right to stop them using the name or part of the name, for the same or similar products or services – for those benefits, you need a registered trade mark. 

Trade marks 

A trade mark functions as a badge of origin to distinguish your products or services from those of other traders in the marketplace. Trade marks come in a range of different forms, and can be made up of several elements such as plain words, stylised words and logos (or a combination of all three known as “composite marks”).  

An unregistered trade mark (such as a mark that is being used in the market, but has not been registered) does not give the user an exclusive right to use that mark. The only way to achieve a monopoly in a brand is to register it as a trade mark.

Registering your brand as a trade mark provides three key benefits: 

  1. as the owner, you secure exclusive rights to use, license and sell the mark in a particular jurisdiction in relation to the products or services claimed; 
  2. you can prevent another trader from using or registering a substantially identical or deceptively similar trade mark in respect of the specific products or services nominated in the registration, or closely related ones; and
  3. prospective investors like to see that your business’s trade marks registrations are in place prior to contributing capital, because these registered rights add value to your business and enable it to capitalise on the positive reputation of its brand, whether by selling its products or services under that mark or by licensing the trade mark to others.

With the meticulousness of Stanley Tucci reinventing Anne Hathaway in The Devil Wears Prada, we can work with you to determine the most appropriate filing strategy for your business. This will depend on how and where you intend to use the trade mark, and the scope of protection you require. For example, a plain word mark will grant the broadest protection, compared to a stylised or composite mark, as you will be able to use the mark in every legible format.  Examples of each option are below:

Plain word trade mark:

GREASE

Stylised trade mark:

 

Composite trade mark: 

In order to be registered, a trade mark must meet the following criteria:

  • your trade mark must be capable of being described or represented graphically;
  • your trade mark must not be “scandalous”. Scandalous marks may be defamatory, condone racism or terrorism, or contain obscene or coarse language. The type of goods or services you offer are also relevant to whether a mark is scandalous; 
  • your trade mark must not be contrary to law. For example, the word CHAMPAGNE is subject to particular restrictions in terms of the use of the word and cannot be registered as a trade mark;
  • your trade mark must not include certain prescribed signs and symbols. For example, the phrases TRADE MARK and OLYMPIC CHAMPION are subject to particular legislation and cannot be registered; 
  • your trade mark must not be deceptive or confusing. Examples of these marks would be VITAMIN for a soap containing no vitamins, or BUBBLE-UP for a non-aerated drink;
  • your trade mark must be capable of distinguishing your goods or services from similar goods and services of other traders; and
  • your trade mark must not be substantially identical or deceptively similar to a prior trade mark. For example, if a trade mark for CAKE KING was already registered, KAKE KING for similar goods and services would be confusingly similar and likely to be rejected.

Pre-filing searches

While a full-blown military operation like Sandra Bullock’s transformation from FBI agent to Miss United States pageant participant in Miss Congeniality won’t be necessary to prepare you for seeking trade mark protection, we do recommend pre-filing searches. 

Pre-filing searches assist you to identify any earlier filed applications or registrations which may hinder the progress of your trade mark application, and give an indication of any likely examination or opposition challenges your application might face. This is an optional service, however, they will help you make an informed decision about your rebrand, prior to filing a trade mark application. It might even be worthwhile shopping around like Julia Roberts in Pretty Woman, and conducting pre-filing searches on a number of prospective trade marks, to see which one has the best chance of success.

TM Headstart application

Another option is to file your trade mark application as a TM Headstart Application. This method is particularly useful where your trade application mark may receive citations (that is, objections from an examiner based on pending and registered marks that are similar to and were filed earlier in time than your own mark). The TM Headstart Application process provides you with the benefit of a pre-application assessment by an IP Australia Trade Mark Examiner, during which you may amend certain aspects of your application at the Examiner’s recommendation (including the representation of your trade mark, or the goods and services claimed).  

A TM HeadStart Application isn’t right for all trade mark applications, but for some it can be helpful. After the assessment has occurred, you can then choose to continue with the conversion of your application to a standard application, at which point it will be formally filed with IP Australia. 

Overseas protection

Trade mark registrations are jurisdictional, which means you only obtain their benefits in the specific countries where you secure registrations.  If you intend to trade outside of Australia, we recommend you also consider filing trade mark applications in each other jurisdiction of interest, to afford you the best possible protection for your brand. This is particularly important in countries with a “first to file” system (eg China), where the party who is first to file a trade mark application for a given mark will own that trade mark, regardless of who first used it. Unfortunately, it’s impossible to go back in time like Brad Pitt in The Curious Case of Benjamin Button – so planning ahead is the best approach.

Top tips for your 2022 rebrand

When considering a new brand, product name, or logo, we strongly recommend:

  • brainstorming a number of trade marks you could use;
  • checking whether your proposed trade mark is registrable;
  • deciding what products or services the trade mark will apply to; 
  • conducting searches in each country of interest to determine if any similar marks are already registered or in use; and
  • when everything is ready to go together, filing your trade mark application.

For more information about trade marks, or to discuss your rebranding plans for 2022, please contact our Intellectual Property and Technology team.

Authors
Hayden Delaney
Partner
Hayden is a Partner and he leads HopgoodGanim’s Intellectual Property and Technology team. Hayden specialises in the information, communications and technology sector, and intellectual property law.
Steven Hunwicks
Senior Associate
Steven is a Senior Associate in our Intellectual Property and Technology practice.
Hannah Fas
Associate
Hannah is an Associate in our Intellectual Property and Technology team.

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