You will find goodwill and business reputation, and therefore customer patronage, connected with the name and logo mark of an established, well-marketed business. Branding and get-up can differentiate your business identity from others in your market segment. With that in mind, we offer 5 tips for small businesses as follows.
- Register your business name with the Australian Securities and Investments Commission, or if you intend trading outside New South Wales consider registering a company under your business name, after checking that name or a similar name is not already being used by others.
- Have your logo and/or business name registered as a trademark.
- Consider registering other elements of your get-up and branding as a trademark, for instance, your by-line as presented in a graphic design which distinguishes your goods or services from others.
- Before your logo is registered as a trademark you can use the symbol ™ which indicates that the word or device is intended to be used as a trademark.
- Once your mark is registered you can use the symbol ® in conjunction with the mark.
Searches to help you choose the business name to register with ASIC
Before deciding on a business name, it is a good idea to obtain searches to identify names of existing businesses, such as:
- domain names searches
- Australian Business Numbers search
- Facebook, Twitter and searches of other social media
- trade mark searches through IP Australia
- business name searches through the Australian Securities and Investments Commission.
What are trademarks?
A trademark shows where a product has come from. Traditionally it is a company’s graphics and typeface that shows its unique branding. Some larger companies attempt to gain exclusivity in use of particular elements of its branding (such as a colour, shape, word or numeral) by seeking to register each separate element as a trademark as well as the total design. Typically, in small businesses a trademark is the logo on your letterhead and on your signage. A registered trademark is a trademark registered under the Trademarks Act 1995 (Cth) by IP Australia after considering your application.
Why is trademark registration important for small businesses?
Registration of your trademark in relation to your type of goods or services can prevent others from registering a substantially similar trademark in respect of those services or goods, or similar services or goods. Also, you can take infringement action against someone who copies your registered trademark, or uses one which is substantially identical with or deceptively similar to it.
Should you apply for trademark registration of your logo or your business name?
Commonly, rejection of an application for trademark registration occurs because:
- the trademark lacks distinctiveness such that it is substantially identical with, or deceptively similar to, an already registered or applied for trademark in relation to the nominated class of goods or services, or similar goods or services; or
- the trademark lacks distinguishing features capable of distinguishing the trademark applicant’s goods or services, from those of goods or services of other people.
A proper searching of the registered trademark database can minimise the first risk. The second risk is more challenging, and benefits from a thoughtful approach.
With that in mind, should you apply to have your business name registered as a trademark, or your logo registered as a trademark? Or both?
Generally, it will be easier to have an application for registration of a graphic-designed logo as trademark (a “Composite Mark”), than it will be to have your business name registered as a trademark (a “Word Mark”) because generally a graphic-designed logo can more easily meet the distinctiveness and the distinguishing features test, compared to a business name alone.
We have also found IP Australia to be careful not to allow some businesses to monopolise more common or generic names of goods and services, unless there is solid evidence of past usage leading consumers of such goods or service inevitably connecting such words to the existing business. Otherwise, other businesses would be prevented from referring to common descriptions and lingo when marketing such products generically, an outcome the Trade Marks Act is designed to prevent.
Therefore, the costs of paying government fees for potentially multiple trademark registration applications should be weighed against the risk of one or more of those applications being rejected by IP Australia due to not meeting the prerequisites under the Trade Marks Act.
What can’t be registered as trademarks?
- Ordinary descriptive words which are not inherently adapted to distinguish your goods or services (being words that others in the industry would ordinarily use) and which are not combined with a distinguishing graphic device;
- Geographical references;
- Colours not combined with another element of packaging;
- Marks which cannot be represented graphically (i.e. sound and smell although words describing them may be registrable);
- Prescribed words such as the flag, seal, arms or emblem of the Commonwealth, a State or any city or public institution of Australia;
- Words used to reserve intellectual property rights such as ‘registered design.’
What if someone else already has a similar trademark?
IP Australia will have grounds not to register your trademark if:
- it is substantially identical with or deceptively similar to another registered trademark (or prior trademark application) in respect of similar goods or closely related services; or
- it is substantially identical with or deceptively similar to another trademark which is not registered but has a significant reputation in Australia such that registration of your trademark would be likely to deceive or cause confusion; or
- your trademark is likely to cause confusion, for instance, because it includes a connotation that the goods or services contain a characteristic they do not contain or a false geographical identification.