New year, new you? A trade mark guide for your business’s 2022 rebrand
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.
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.
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:
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:
Stylised trade mark:
Composite trade mark:
In order to be registered, a trade mark must meet the following criteria:
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.
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.
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.
When considering a new brand, product name, or logo, we strongly recommend:
For more information about trade marks, or to discuss your rebranding plans for 2022, please contact our Intellectual Property and Technology team.