Home Forums Starting your journey What do I need to protect a brand name.

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  • #999794
    brownbag
    Member
    • Total posts: 37

    My wife has a retail clothes business (she’s a sole trader) but she’s just starting to develop a new range of clothes and has found a name and started on the process.
    What do we need to do to protect this name?
    1. Business Name: It’s not a new business – at present, it is just a brand sold exclusively by her shop. Yet if it is successful, it may become a separate business, so I would think registering the business name is important.
    2. How about trademarking? Do we need to trademark the brand name? The logo is just the brand name in a particular font? Do we need to trademark that?

    Cheers all.

    #1221387
    Corey
    Member
    • Total posts: 568

    A couple of sites for you to read & search

    Cheers
    Corey

    #1221388
    Mischelle
    Member
    • Total posts: 805
    brownbag, post: 267391, member: 112769 wrote:
    My wife has a retail clothes business (she’s a sole trader) but she’s just starting to develop a new range of clothes and has found a name and started on the process.
    What do we need to do to protect this name?
    1. Business Name: It’s not a new business – at present, it is just a brand sold exclusively by her shop. Yet if it is successful, it may become a separate business, so I would think registering the business name is important.
    2. How about trademarking? Do we need to trademark the brand name? The logo is just the brand name in a particular font? Do we need to trademark that?

    Cheers all.
    Hi Brown Bag,

    Firstly, congratulations to your wife for starting this journey.

    I strongly believe in protecting my brands, so good on you for thinking along these lines.

    1 – Business name – IF you want to trade under the brand name then register a business name and trade that name. Registering a business name does not in itself give you any exclusive ownership or proprietary rights to use the business name—only a trade mark can give you that kind of protection. (Quoted from https://www.business.gov.au/registrations/intellectual-property/trade-marks)

    2 – Trademarks (TM’s) – this is what you need to protect your brand. I have numerous trademarks for products that I sell through my company. They are individual products that I have branded and protected by TM’s.

    As for what to trademark, use with the name. I have one logo TM’d in Aust and USA but seeing as the words in the logo match the actual word I have trademarked I will not be renewing it, as I want to refresh the brand logo.

    Trademarks are broken into categories, you pay for each category you want a TM. Make sure you pick the correct category.

    EXAMPLE: I have 1 name trademarked in 4 categories.

    The TM process is very straight forward, but start with searching if there are any TM’s with that name.

    https://search.ipaustralia.gov.au/trademarks/search/quick

    Then you either do it yourself online or hire a TM lawyer to do it for you.

    All the best
    Schelle

    #1221389
    JacquiPryor
    Member
    • Total posts: 2,344

    Hi [USER=112769]@brownbag[/USER] :)

    Trade Marks attorney here :)

    Just to elaborate a little on the above.

    To protect a name – absolutely trade mark registration is what you want. A business name won’t protect it, but, is a legal requirement if trading by something other than your own name.

    If I understand correctly, your wife uses one particular business name for her ‘shop’ and has another in mind as a brand for the clothing itself?

    If she is operating the ‘shop’ under a name at the moment, then absolutely that should be registered as a business name. If she wishes to protect the shop name, then she would consider registering that name as a trade mark – in relation to retail services.

    Then, if she has an idea in mind as the brand for the clothing line she is developing, she would register this as a trade mark in relation to clothing if wanting to protect that name.

    In terms of ‘what’ to register as the trade mark. Word marks are usually strongest in terms of protection – particularly if ever faced with the need to take steps against infringement. Although, in terms of representing something as a registered trade mark (e.g. using the R symbol next to the name) you should really only use that symbol against the precise trade mark as registered, so, depending on how ‘fancy’ the font and ‘logo’ you might be better to register the name as a one trade mark and logo as another.

    Trade mark rights are country-by-country, and costs will vary depending on classes of goods/services as Mischelle mentioned – and also the countries needed.

    My main ‘tip’ if going the DIY path is ownership – be mindful that your wife as a sole trade may currently be the owner and rightful application but if she ever restructures to a company that is a separate legal personality so that needs to be considered. Or, if she uses the brand now and sets up a company before filing a trademark application that brand (as an unregistered trademark) should be transferred to the company before it files an application.

    All the best with it – if I can be of further help feel free to get in touch (links in signature below).

    #1221390
    Mischelle
    Member
    • Total posts: 805
    JacquiPryor, post: 267441, member: 20176 wrote:
    Hi [USER=112769]@brownbag[/USER] :)

    My main ‘tip’ if going the DIY path is ownership – be mindful that your wife as a sole trade may currently be the owner and rightful application but if she ever restructures to a company that is a separate legal personality so that needs to be considered. Or, if she uses the brand now and sets up a company before filing a trademark application that brand (as an unregistered trademark) should be transferred to the company before it files an application.

    Hi Brown Bag,

    [USER=20176]@JacquiPryor[/USER] is the person I would have recommended if you needed further help, she is a regular here and shares her knowledge and experiences frequently.

    I didn’t even think of ownership, as I am a Pty Ltd so this never came up :):)

    When I first started I used a TM attorney for all my TM’s, they did the searches, application and they monitored until it was registered, then they managed the on-going renewal reminders. The attorney also communicated with the international attorneys for any international TM’s.

    Not only did they help me for registration but they also helped me with 3 different companies who used my TM’d name on their products, one of them was a Australian government Department, so they had more people power than me.

    All the best
    Mischelle

    #1221391
    JacquiPryor
    Member
    • Total posts: 2,344

    Thanks Mischelle :)

    Obviously without specific disclosure, I wonder how you found dealing with the AU Gov in an infringement matter? I find it such a mixed back – we’ve had a few matters involving Gov for clients. Depending on which ‘arm’ or department the result is vastly different; some are so quick to resolve rather than risk bad press and others have a bit of a ‘we can do what we want’ attitude in my experience. Hope yours was the first example and things sorted quickly for you.

    #1221392
    Mischelle
    Member
    • Total posts: 805
    JacquiPryor, post: 267446, member: 20176 wrote:
    Thanks Mischelle :)

    Obviously without specific disclosure, I wonder how you found dealing with the AU Gov in an infringement matter? I find it such a mixed back – we’ve had a few matters involving Gov for clients. Depending on which ‘arm’ or department the result is vastly different; some are so quick to resolve rather than risk bad press and others have a bit of a ‘we can do what we want’ attitude in my experience. Hope yours was the first example and things sorted quickly for you.

    It was a little bit of a shock for me but it all turned out OK, they were trying to TM my name in the SAME category and when they realised it was already there they asked it I would approve for them to TM it too. What??? LOL :rolleyes::rolleyes:

    The issue was they had already developed and branded their product and launched it to the public and then applied for a TM without even checking TM’s – I would have sacked their attorney.

    I said no they could not use it, they said all sorts of bullying things, but in the end they ended up having to rebrand their entire product and website. :)

    [USER=112769]@brownbag[/USER] this is why you product your brand :):):)

    #1221393
    JacquiPryor
    Member
    • Total posts: 2,344

    Ahh – got ya. Ha. There are certain times we recommend approaching owners for consent, but not in that sort of a situation…

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