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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).
Up0JacquiPryor, 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
MischelleUp0Thanks 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.
Up0JacquiPryor, 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
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