How to protect your brand with trade mark registration

[Lucy Kippist]

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Good morning everyone,

Jacqui Pryor is a familiar and well respected voice here on the forums. She’ll be hosting a thread here over the next couple of weeks devoted to her speciality – trade mark registration – a vital ingredient of business building, especially when it comes to protecting your brand.

Over to you, Jacqui!

[JacquiPryor]

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Thanks for the kind intro Lucy!

By way of a more formal introduction, I am a registered trade marks attorney in Australia and have worked in this field for more than 20 years now (eek!)

I’m looking forward to answering any questions that those flying solo may have about trade marks/trade mark matters. Am also happy to answer queries around other forms of IP (copyright, designs etc).

A little bit of house keeping given the nature of the topic:

1. Any answers here are information only, and not advice. If you have a specific issue at hand that requires advice, feel free to shoot me a message so I can see if/how I can help directly;

2. Don’t disclose anything confidential here. For example, if you have a query about protecting a new ‘invention’, keep the question general as disclosing the details could prevent you from being able to protect it!

Looking forward to hearing your questions, and, hopefully providing some useful information around protecting your brands

[JacquiPryor]

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Maybe I’ll kick it off with a bit of trade mark 101..

What is a trade mark?
Believe it or not a trade mark exists before you register it. By definition, it’s basically any sign that you use to distinguish your goods/services from the similar goods/services of other trade marks. A sign could be a name, logo, image, slogan and even colours, shapes, sounds and smells.

For most businesses their trade mark/s will be a business name and logo, or perhaps product brand names.

Given the definition above, this exists from the time you start using it as that distinctive ‘sign’ for your product or service. Registering your trade mark comes with benefits you won’t necessarily have otherwise. For example, the right to use that trade mark for your products/services (meaning, another party can’t suggest you are infringing their rights through using the trade mark you have registered); the right to take steps is someone pops up using the same or confusingly similar brand for similar goods/services and also the right to authorise other people to use it if you wish.

Have a good weekend everyone and I look forward to hearing any questions

[Greg_M]

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Hi Jacqui,

I have a question which “I think” is kind of related and I’ve wondered about for a while.

How strong is a domain name legally (if at all) as both a business identity/brand?

I know a domain name is inherently unique and can’t be used by anyone else (I know you can register similar or use a different TLD type).

The reason I ask is my business domain is owned by my pty ltd trading company…which has a very boring name (mine with pty ltd on the end).

So I tend to use my domain name 34south.io (there’s no website atm)…also very boring, but it’s connected to my location 34 degrees south of the equator etc etc, which I use as a byline/ex-plainer of sorts.

I did have 34 South registered with ASIC but let it lapse…old blokes a chiseler and I didn’t think it was earning it’s keep given the work I do is 99.99% by direct referral.

I’m about to launch a website with that domain (and business idea)….am I about to shoot myself in the foot if I don’t have a separate business name?

P.S . I always identify the company (ACN ABN) as the owner of the domain and the trading entity clients would be dealing with.

Cheers

[JacquiPryor]

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Hi Greg

Thanks for posting Yep, certainly kind of related to the topic!

Hope the following comments help.

How strong is a domain name legally (if at all) as both a business identity/brand?

In my view, not particularly strong legally speaking. Owning the domain does not in itself create a proprietary right to the brand, so, if someone else was to register and use a similar (as you note, that’s entirely possible by using a similar name or a different TLD type) you might be (subject to all circumstances) quite limited to do much about it without having also registered the name as a trade mark.


If you are actively using the name to promote a product or service, and another person has a superior registered mark then it’s possible your use could infringe. Having acquired the domain name (or even a company or business name for that matter) legitimately does not in itself defend against a trade mark infringement claim.

I’m about to launch a website with that domain (and business idea)….am I about to shoot myself in the foot if I don’t have a separate business name?

If it could be perceived that you are trading as “34 South” then you should register the associated business name with ASIC just to be sure. It is a legal requirement these days to register a business name if it’s different to the owner’s name (be that a personal or company owner) – mostly so consumers can clearly identify who they are doing business with. If it’s super clear at the site, on invoices etc that the business is your Pty Ltd company and not a business called 34 South then you shouldn’t need to register the business name separately.

If your business ‘idea’ is unique and inventive, you may wish to look at whether it’s protectable before you launch. Ideas themselves aren’t, but aspects can be (e.g. if your business is going to sell a brand new inventive widget you’d want to consider patents ahead of launch and disclosure; any written material – including web content that is your original work is automatically covered by copyright, which protects the copy rather than the idea, and then, if you’re effectively going to brand the offering as “34 South” you’d consider registering this name as a trade mark to gain ownership rights to that name for the type of business you’re running so others can’t use the same in Australia for similar business types, but also to ensure you’re not going to be found infringing of another’s trade mark.

I hope this helps? Feel free to post if you have any follow up queries and happy to answer

[Greg_M]

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JacquiPryor, post: 268631, member: 20176 wrote:

Hi Greg

Thanks for posting Yep, certainly kind of related to the topic!

Hope the following comments help.

How strong is a domain name legally (if at all) as both a business identity/brand?

In my view, not particularly strong legally speaking. Owning the domain does not in itself create a proprietary right to the brand, so, if someone else was to register and use a similar (as you note, that’s entirely possible by using a similar name or a different TLD type) you might be (subject to all circumstances) quite limited to do much about it without having also registered the name as a trade mark.


If you are actively using the name to promote a product or service, and another person has a superior registered mark then it’s possible your use could infringe. Having acquired the domain name (or even a company or business name for that matter) legitimately does not in itself defend against a trade mark infringement claim.

I’m about to launch a website with that domain (and business idea)….am I about to shoot myself in the foot if I don’t have a separate business name?

If it could be perceived that you are trading as “34 South” then you should register the associated business name with ASIC just to be sure. It is a legal requirement these days to register a business name if it’s different to the owner’s name (be that a personal or company owner) – mostly so consumers can clearly identify who they are doing business with. If it’s super clear at the site, on invoices etc that the business is your Pty Ltd company and not a business called 34 South then you shouldn’t need to register the business name separately.

If your business ‘idea’ is unique and inventive, you may wish to look at whether it’s protectable before you launch. Ideas themselves aren’t, but aspects can be (e.g. if your business is going to sell a brand new inventive widget you’d want to consider patents ahead of launch and disclosure; any written material – including web content that is your original work is automatically covered by copyright, which protects the copy rather than the idea, and then, if you’re effectively going to brand the offering as “34 South” you’d consider registering this name as a trade mark to gain ownership rights to that name for the type of business you’re running so others can’t use the same in Australia for similar business types, but also to ensure you’re not going to be found infringing of another’s trade mark.

I hope this helps? Feel free to post if you have any follow up queries and happy to answer

Thanks Jacqui,

Plenty off food for thought there. Sounds like I’m getting it about half right at least.

Sad to say there’s nothing unique on offer, just a variation on an old theme and selling a service. I was going to wind it down to zero and go lay in the shade. But some demand, plus a family member wanting to get involved, that’s happy to do a lot of the work has made me decide to hang in for a while yet.

I don’t even mention the domain name when invoicing or quoting. I didn’t really think of it as a brand…just an identifier (but I guess it is really, ha ha).

Sounds like the minimum could be registering a business name again…and my company name is as it is, because as you mentioned, there was no drama registering it.

I was also interested in the question in a broader sense, for other domains I might use for myself or clients.

We do have a web app in an early stage of development which I was lucky enough to get an exact match on the domain using one of the newish TLD’s.

So it’s nice to know (if it’s one of the .00 something % that get traction) the possibilities and risks.

I also have a client of many years standing that seems to dream up business ideas in his sleep (has a pretty good strike rate too) and keeps coming back for anything digital, but is pretty sloppy at dotting the i’s and crossing the t’s…might have to update him on this.

Thanks again

[JacquiPryor]

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A domain itself is really nothing more than address. The same way we’d give our physical addresses to people so they can send us bills! Online, and from the trade mark stand point, it’s more about what you do with that address and if/how you promote it ‘as a brand’.

It sounds like, in your case, no major headache should come from the use of the domain name. Registering a business name can help simply avoid the headache (which sounds to be minimal in your case) of ever being told that you should have registered it.

For others, where the domain name IS their business name and IS their brand, it becomes a little more important I think to check off on the legal and trade mark side of things.

It’s hard to say in a broader sense as it all becomes a bit case by case. For example, if a domain name matches the offering and intends to launch (e.g. in relation to a web app) as googleofficialpartner.com that’s likely to be more of an issue than, say, melbournehairdresser.com.au. The first example implies a connection with Google that might not exist, and (depending on actual branding use) could infringe trade marks. The second is highly descriptive/generic so unlikely to falsely suggest an affiliation with someone else, and also unlikely to infringe a trade mark.

[Greg_M]

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JacquiPryor, post: 268634, member: 20176 wrote:

A domain itself is really nothing more than address. The same way we’d give our physical addresses to people so they can send us bills! Online, and from the trade mark stand point, it’s more about what you do with that address and if/how you promote it ‘as a brand’.

It sounds like, in your case, no major headache should come from the use of the domain name. Registering a business name can help simply avoid the headache (which sounds to be minimal in your case) of ever being told that you should have registered it.

For others, where the domain name IS their business name and IS their brand, it becomes a little more important I think to check off on the legal and trade mark side of things.

It’s hard to say in a broader sense as it all becomes a bit case by case. For example, if a domain name matches the offering and intends to launch (e.g. in relation to a web app) as googleofficialpartner.com that’s likely to be more of an issue than, say, melbournehairdresser.com.au. The first example implies a connection with Google that might not exist, and (depending on actual branding use) could infringe trade marks. The second is highly descriptive/generic so unlikely to falsely suggest an affiliation with someone else, and also unlikely to infringe a trade mark.

I think in my case (the wannabe app) sounds like I’m safe atm.

Thanks for the tip on domain name subtleties I’ll take that on board.

[JacquiPryor]

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What would you do if you found someone using the same/similar business name or product name or product idea or business idea to yours?

#Tip – don’t take it upon yourself to send a nasty message/letter/email before you have done your home work.

In Australia, sending any sort of ‘demand’ that someone stops using a name or you will take legal action against them without the legal basis for that demand can backfire. For example, by way of the receiver actually commencing proceedings against you for sending a groundless threat of legal action.

Be sure you have the ownership of the ‘thing’ you’re basing your demand on, and be sure that the other person’s conduct constitutes a breach of your rights before sending anything.

[JacquiPryor]

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Did you/have you done your due diligence?

How many of us have clicked the ‘yes, I have read the terms and conditions’ at a website without having actually read them? Registering a business name comes with a similar thing. When you first log into ASIC to register a business name you are presented with a series of things to be aware of, requiring you to tick each one just to get started with your business name application. I’ve posted about this in another thread previously, and suffice to say my research suggest a lot of business owners have just ticked in order to get to the next page.

They include, among other things, acknowledgement that the registration of your business name could infringe a trade mark and that a business name does not convey exclusive rights to the owner of the business name.

Since the introduction of that checklist, it can be much harder to argue that you had ‘no idea’ about trade marks or common law rights in brands when on the receiving end of a cease & desist letter.

[JacquiPryor]

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Hi all.. my hosting duties will expire soon and I would love to hear any questions, thoughts, scenarios etc on anything IP related

Given we have a lot of folk around here new to business, or looking to start a business – and, that most businesses have at least some IP (be that copyright or trade marks or something else) don’t be shy if you have any questions

[Author]

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