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Starting / Business startup

Five things to remember when registering a trade mark

Registering a trade mark can be a tricky business for soloists. Get it right first go with these essential tips.

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Registering a trade mark is crucial to the success of any business. The application process can either be handled by a trade mark agent or attorney, employed by the business, or by the business owner. Often, in the case of micro businesses, soloists take on the job themselves. If this is you, ensure you keep the following points in mind.

1. Make sure your trade mark is a trade mark!

A trade mark by definition is a sign that one trader uses to distinguish their goods/services from those of other traders. A sign can be a name, word/s, logo, image, slogan, colour, scent, aspect of packaging and even a sound – so long as it meets the criteria. It must “brand” your product or service as yours and act as a badge of origin for those goods and services. It will be more difficult (but not necessarily impossible) to register a trade mark if it’s too descriptive, or something that is commonly used in connection with your type of products and services.

2. The process is a long one

It takes a minimum of seven-and-a-half months to register a trade mark in Australia. For this reason, conducting a search on your proposed trade mark and doing as much homework as possible before filing an application is encouraged. Depending on the type of application you file, it can be around four months before you hear from the government as to whether your trade mark is acceptable for registration. If you have a new name/logo or other “sign” that’s not yet being promoted, overcoming any issues relating to its registrability are often more difficult. Ensuring the trade mark is registrable early on can save time, money and heartache down the track.

"Ensuring the trade mark is registrable early on can save time, money and heartache down the track."

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3. Know the future of your business

When you register a trade mark you do so in connection with the types of products and/or services you “brand” with the trade mark. These are nominated at the time you file your application, and cannot be expanded on later. New applications (and therefore spending more money) would be required to register for additional products/services. It’s therefore important to include any products/services you intend to promote under your trade mark within the next three years or so. Keep in mind that trade marks are vulnerable to removal if they go unused for too long, or there was no intention to actually use the trade mark on those goods/services at the time of filing.

4. Registering logos: Colour, or black and white?

Generally speaking, I would advise clients to file logos in black and white rather than full colour representations. In Australia, “colour” only plays a part in the registered/protected trade mark when it is claimed specifically by way of including an additional statement to the application. However, other countries (such as the USA) will automatically assume the final protected rights to include colours if you provide a colour copy of your logo. There is more flexibility here and overseas to use your logo in different colours if the copy registered is black and white.

5. Importing and exporting

If you are importing a product to Australia that is supplied and branded by an overseas company, you may not have the right to register the brand as a trade mark in your name in Australia. If you are acting as a distributor for someone else’s product, there is a real chance they would still be seen as the owner, even if they have not sought to protect their rights here. If you intend to export a product to other countries, be mindful that trade mark registration is country-by-country, so searches should be carried out as early as possible. You might successfully register a brand in Australia only to find out that you have to release the product under a different name in different countries.

What was your experience of registering a trade mark? What would you recommend soloists be mindful of when undergoing this process?

Jacqui Pryor

is the director of Mark My Words Trademark Services Pty Ltd and brings with her 18 years experience in dealing with Australian & International trademark matters - affordably and professionally.

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