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  • #986339
    No Limits
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    Hi Guys,

    We are looking to expand a little into related markets with our existing biz.
    One thing I want to branch out in to is a clothing range, T-Shirts, shorts, hoodies, etc.

    My question for those in the know is, how will we know if we are breaching any existing registered trademarks or intellectual property.
    We have our own trademarked brand name, but there are so many various designs available, something has bound to have been done similar in the past which could possibly be registered.
    We won’t be going big time with this too soon, but would be good to get off on the right foot.
    Is the risk of being legally persued too small to worry about if we unintentionally infringe on some existing designs we didn’t even know about.
    It’s highly unlikely we will hit the mainstream market anyway, so the exposure will be tiny compared to the big brands out in the market, I doubt we’ll even get noticed, taking into consideration the size of the market.
    Opinions on this please.

    Also, our industry is fitness, so I’d like our T-Shirts, (likely main product), to have nice attractive designs.
    We have our own logo, but I expect this will only be incorporated slightly into most designs, with custom graphics featuring mostly.
    Where can I get these custom designs done at an economical rate?
    Would services such as elance.com, freelancer.com, etc be a good way to source cheap designs which we can put to print?

    Any other advice would be greatly appreciated as this is an area we have not operated in previously.

    Regards
    No Limits

    #1157331
    JacquiPryor
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    Hi No Limits!

    Hope I can help a little.

    If you have registered your brand as a trademark (for clothing) then you are allowed to use your brand for clothing.

    By “designs” are you referring to artwork designs that may appear on the t-shirts/clothing? If so, such designs may fall under copyright rather than trademarks. Copyright is an automatic right granted to the author/creator of the artwork in most cases. Because it’s automatic there’s no database in Australia to check to see who owns what.

    In some cases, people may have registered those designs also as trademarks if they feel the design is used as a ‘brand’ for them. You can search images on the trademark database.

    The best thing to do is (obviously) create your own designs and don’t copy others you have seen. If you create your own artistic designs then this will effectively (automatically) become your copyright.

    If someone else feels you have infringed their copyright by using a substantial part of their work in your design the usual first step would be them contacting you with a letter outlining their concerns etc. Usually they would ask you to stop using their work and remove all stock/advertising etc. Each case is different, so if you have created an original design and find yourself receiving this letter professional advice should be obtained to determine if it actually is infringement.

    In addition to having registered your brand name as a trademark, you might consider also registering your logo as a trademark.

    Hopefully someone else will come along soon and provide some feedback as to where you can have your designs done. A point to note if you are outsourcing a designer is to ensure that in any terms & conditions/agreement with them, it states that you become the copyright owner of those designs, and, that they warrant them to be original designs. If there is nothing in writing to the contrary then the outsourced designer may end up being the copyright owner by default; and, by having them warrant the designs to be original, in the event you do receive any allegation of infringement you will have some supporting documentation as to the innocence of the infringement.

    All the best :)

    #1157332
    No Limits
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    Hi Jacqui,

    Thanks for taking the time to write such a detailed reply.
    We do have our business name and brand name trademarked, but not for clothing category.
    In the process of trademarking the logos for both.
    When we register our logos, we will register them for clothing, so hopefully it won’t matter that the names themselves are not trademarked in the clothing category.

    I feel more confident now that even if our designer copies some existing work that we don’t even know exists, if we modify it enough based on what we think looks good, hopefully that will be enough of a difference to not cause any disputes.
    Worse case drop that certain design if a convincing dispute come through, which should only be one of many.

    Thanks again.

    No Limits

    #1157333
    JacquiPryor
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    Hi No Limits…

    Sorry for not replying sooner!

    When we register our logos, we will register them for clothing, so hopefully it won’t matter that the names themselves are not trademarked in the clothing category.

    I would still encourage you to consider applications for the names themselves in the clothing category. Without doing so you cannot claim that the names (when used out of the logo versions) are registered/protected when they are used in connection with clothing. So, to ensure best protection I would suggest they be filed also under that class.

    I feel more confident now that even if our designer copies some existing work that we don’t even know exists, if we modify it enough based on what we think looks good, hopefully that will be enough of a difference to not cause any disputes.

    I would still suggest checking ts & cs with your designer and making sure that any agreement with them includes them assuring you that the designs are original designs etc. There is no set ruling as to how ‘different’ a design must be to avoid infringement. It all comes down to whether your design has used a ‘significant’ part of the earlier work.

    Worse case drop that certain design if a convincing dispute come through, which should only be one of many.

    If a claim of infringement is made then usually stopping use of that design & agreeing not to use it again in the future etc would settle the matter quite quickly. As previously noted, each case is different so should be assessed on its own merits. (Some times though it is easier – whether right or wrong – to simply comply with whatever is being requested).

    All the best with it :)

    #1157334
    Lucinda Lions
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    Hi No Limits

    I see that the lovely Jacqui Pryor has given you loads of useful advice in regard to copyright and trademarking.

    In regard to finding someone who does custom designs, one option is to look through the Flying Solo member directory. There are loads of talented designers listed on there. If you like, check out their websites, portfolios and prices.

    Here’s the link for the graphic designers: http://www.flyingsolo.com.au/directory/Design-Illustration/Graphic

    Wishing you the very best of luck!
    Lucinda :-)

    #1157335
    SFCH_4LYF
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    JacquiPryor

    Hi im oli, ive been looking for some sound advice and from the looks of it you, your on the money.

    My question is a little similar only a bit sooner in the process to “no limits”
    I have a t shirt and clothing brand that I have created from scratch with its own logo for the brand, the tshirts ( first part of the business) have their own unique wording.
    I want to do some more sales prior to trademarking,
    First Q) if I start selling a design logo and wording all created from scratch and made by, is this safe and am I covered if someone copy’s it?
    Second Q) when I go to trademark, im unsure if a trademark covers just the logo or if I need to trademark logo wording and designs all separately, or is an IP able to cover them all as they are my intellectual property.

    thanks in advance and apologies if these questions are basic knowledge,
    Im still at the very start of this journey..

    Regards oli.

    #1157336
    JacquiPryor
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    Hi Oli,

    I hope this helps answer your questions:

    a) If you start selling now under logo/wording that you created there is no black & white answer as to whether this is ‘safe’. I would encourage some basic trademark searches at least in Australia (and/or other countries in which you intend to sell) to rule out any obvious infringement issues. In terms of being covered if someone else copies – the answer again will be ‘it depends’. You are unlikely to be in as strong a position to stop others using your brand or logo without a trademark registered. Sometimes copyright can cover logos as artistic works – but, copyright would not cover the name alone. Other areas of law can come into play in addition to trademark infringement when others copy your brands – however, they can be harder to enforce and can require you to have a substantial reputation in the brand for them to apply – so, a newer business is not likely to have the level of reputation required for those areas to apply. Trademark infringement action doesn’t require you to have a reputation but bases determination around the first person to use or register the brand as a trademark (whichever is earlier). If you know you came up with your logo yourself and the brand name, and have conducted searches as much as you can yourself online etc then it’s probably a low risk that using before registering will step on any toes, but, it’s unfortunately not a simple yes or no answer.

    b) I recommend, where viable, clients register their names and logos as separate trademarks. You may only repesent something as a registered trademark when it is the thing actually registered. By registering logos and brand names as two then you’ll be able to claim the full logo is registered (obviously in due course once actually registered) and also the wording when it may appear outside of the logo. Think – for example – Nike has registered NIKE wording, Logos, and also their swoosh separately and the phrase “Just Do it” – so, no matter how they use/promote their brands – together or separately, they are covered.

    In terms of registering designs separately, as with the original posts above – if you mean actual illustration/print type designs on your products – then, these are more likely to be considered ‘artworks’ under the Copyright Act. If you are the original illustrator/photographer etc of artwork you will likely be the automatic holder of the copyright so others would be infringing if they used those same illustrations/artworks. (This is separate to trademark protection for the actual brand name or main logo). If you have contracted someone for the ‘designs’ in terms of artwork for the apparel then as with the comments to No Limits above, check their Ts & Cs on the topic of copyright. A lot of designers will assign ownership of copyright to you once you pay them for the work – others may not, so, it’s possible that they let you use their artwork but keep ownership.

    Unfortunately, you can’t just file a single “IP” application to cover everything. IP represents a range of things – trademarks, designs, copyright, patents and more. Each serves to protect a certain type of IP.

    I hope this assists. Feel free to get in touch directly if you have further questions.

    All the best,

    #1157337
    SFCH_4LYF
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    Thank Jacqui
    Does help of sorts….
    I guess I will have three trademarks to do as I’m similar to Nike I guess only I will have company logo brand logo and wording to go with it.

    I am still a little worried as I am still testing and validating the brand and all aspects of it through peer sales and have been getting some great feed back but have also been getting some interest from people that arnt buying…. Which is why I’m asking about rights of the person (me) who designed, manufactured and sold the item with the logos on it first. I was hoping the a made product for sale was proof of ownership and creation.
    Oh and yes I have searched every place I can for anything similar and nothing on the logos but the wording was used similarly in a band title so I have changed the last work completely and changed the spelling of the first word (3 words in the phrase) so I feel it’s different enough to stand alone.
    Thanks for the help. I guess I will risk it for the biscuit until I validate the designs and shirts enough to warrant spending the coin on three separate trademarks…

    Cheers much apriciated..
    Oli.

    #1157338
    JacquiPryor
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    Hi Oli

    I think part of the question here relates to rights to the product versus right to the brand? Trademarks are ‘signs’ such as logos, names, words, images etc used to brand and distinguish your products. If the items themselves (in terms of the product) are unique and new, then they may have ability to register as designs – separately and differently to trademarks. The key here is they must be new to be certified as valid designs. Once something is published/disclosed publicly you may lose the right to protect the actual product design in Australia.

    In terms of the logo – if you are the first user then you may well have some common law ownership, in so far as a defence against a trademark infringement claim from another person. (i.e. if someone registers the same or similar logo design as a trademark and you actually used your logo before they first used or registered theirs then you would have a prior rights defence to trademark infringement claims). However, this is different to your right to stop others using similar brands before you have trademark registration in place.

    Trademark infringement (generally speaking) arises if a person uses something without trademark registration that is substantial identical or deceptively similar with a registered trademark. So, you may have coined your brand name and created a logo – but, it is possible that your brand name is similar to an existing trademark for a name, so, in that case the registered trademark owner may still have grounds to allege infringement even if the name is not absolutely identical and even though you were the first user of your exact name. Obviously, the more distinctive your brand is and the more searches you’ve done then it may very well be you are ‘safe’ to use the brand without infringing any rights.

    In terms of your searches finding a similar brand initially (so you changed some elements of yours) – if they are not in the same type of product/service as yourself, it’s also unlikely you’ll breach their rights (unless they’re well known such that their brand is easily recognised irrespective of the type of product/service involved). Without knowing the particular name/brand involved here it’s difficult to comment whether changing spelling and a word is sufficient to ensure there’s no infringement.

    Purely as an example – let’s say your brand was “Phone Australia” for clothing; if someone else had registered Fone Aus. (different spelling/slightly different last word) there may still be infringement as the marks are phonetically very similar and convey the same impression. Basically, – is there likely to be confusion between your brand and an earlier registered trademark because of the similarities in name and product? If you’d like to send me a private message with the actual brand name I’m happy to comment further to your specific brand.

    In terms of costs to register – consider, once able, filing at least a trademark application for your name or full logo. If you were to register the full logo, whilst this does not register the independent components such as an image/name, it does at least incorporate all elements. Your rights would be infringed if someone used something confusingly similar to that full logo. Word marks are also advised as they can be ‘stronger’ in terms of enforcing. If someone incorporates your word mark into their own brand/logo etc it’s hard for them to argue they’ve not infringed when they’ve fully incorporated your existing trademark into their brand.

    I hope this assists. Let me know if I can offer any further information.

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