Do’s and Don’ts on how to choose a strong trade mark, how to use it and how to protect it

A great deal of money is spent on creating trade marks and even more is often spent on promoting them but often this is all in vain if the trade mark is either not available or is not capable of being registered. Here are ten Do’s and Don’ts about how to choose, use and protect a trade mark.

1. Do your research

Always do a search and make sure a mark is clear for use before adopting it. The obvious advantages of doing this is that you will avoid the cost of an infringement action, will avoid the cost of having to recall or destroy stock and will avoid the cost of having to rebrand.
Essentially doing searches early means you can avoid becoming financially and emotionally invested in a trade mark which is not available.

2. Choose a trade mark that can be protected

Stay away from descriptive words, common surnames or geographical indications. More distinctive trade marks are easier to register and enforce. Choosing a descriptive word or phrase might seem to be the easy option but in the long run the trade mark may not be worth protecting or enforcing.
Descriptive words such as super, ultra, best, finest, freshest, greatest will not give you a monopoly. Spending time and money marketing “Best Candy” for lollies will not be worth it but CANDY for bicycles might work. The strongest marks are often invented words such as NOKIA, KODAK or XEROX.
One and two letter brands are problematic. There are only 26 letters in the alphabet and the registry will not allow a monopoly in a one or two letter trade mark unless it has been used and built up a substantial reputation.

3. File a trade mark application if the mark is worth registering

Consider the marketing objectives for the new trade mark including the period of intended use. If you intend spending money on promoting a trade mark and using it for longer than a couple of months, you should be filing a trade mark application.
The consequences of not registering a trade mark are that it is complicated and expensive to defend your use in the sense that you would have to rely on passing off or on misleading and deceptive conduct as provided for in the Australian Competition and Consumer Act 2010 (Cth) rather than being able to rely on a trade mark registration. Any rights you have to the trade mark would be limited to the exact goods and services and the geographic area where you have been using the mark. In addition, someone else could register the name which could prevent you from using it.

4. Don’t rely on having a business name

Companies (and individuals who don’t use their own names to conduct business) are required to register their business name under the Business Names Registration Act 2011 (Cth). Business names allow consumers to find out who is behind the business name. So, having a business name has an identifying purpose and will not protect you against claims of trade mark infringement if your business name infringes someone’s registered trade mark.

When you apply for a business name it is up to you to make sure that it is not the same or similar to a registered trade mark. You can also not rely on having a business name to try and prevent someone else from using a similar name. You need a trade mark registration to do this.

And while you’re at it, make sure that you do some domain name searches and that you have the corresponding domain name and social media profiles registered.

5. Make sure you have the right to use the trade mark you have created

If your trade mark has a design element in the form of a logo or other visual elements, then under the Copyright Act 1968 (Cth, the copyright in the logo will be owned by the person who created the logo unless you have a written agreement that changes this.

Copyright must be assigned in writing so make sure that you get the copyright in your logo mark transferred to you otherwise you could be infringing the designer’s copyright in particular if you make adaptations to the logo.

6. Use your trade mark consistently

A registered trade mark must be used in the format in which it is registered. Make sure your trade mark is always spelled correctly. Do not add or remove words or visual elements. If the logo changes over time (which often happens) make sure that you file a new application for the new version. Also. if you are expanding your use and are using the mark on a wider range of goods or services, make sure that you file a new application to cover the expansion.

7. Do not use your trade mark descriptively

Do not use your trade mark descriptively or allow it to be used descriptively. The risk is that your trade mark could lose its distinctiveness and become generic.
There are many examples of marks that have become generic through incorrect use, some of these are Escalator, Windsurfer, Thermos, Aspirin, Zipper and Cellophane.
Make sure that you don’t use your trade mark as a noun. An example is the GOOGLE trade mark and ensuring that consumers don’t say “Google it” but rather describe it as doing an internet search using the Google search engine,

8. Use your trade mark and make sure it is being used by the owner of the mark

If a trade mark has not been used for a period of 3 years it can be removed from the register for non-use. Make sure that you use your trade mark in the way that it is registered and that the use is by the owner of the mark or an authorised user. If the use is by a party other than the owner of the trade mark, you should have a license agreement in place which regulates the use.

9. Use the correct symbols

Display ® and ™ correctly. Use the ® symbol to show that your trade mark is registered. You can use the ™ symbol to show that you have a pending trade mark or for signs that you use as trade mark.

10. File overseas applications if you are exporting goods overseas

If you are exporting goods overseas you should be filing overseas applications to make sure your trade mark is protected. This brings us back to our first point which is doing searches and making sure that the brand you have in mind is actually available for use in all the countries in which you intend to do business.

In summary:

Pick a strong, non-descriptive brand name and logo, and then speak to your IP lawyer about doing clearance searches, a filing strategy and also about the agreements you need to have in place to ensure that the money and time you are investing in your trade mark portfolio are worth it. It could save you a lot of heartache.