A trademark is branding that acts as a ‘badge of origin’ for your goods and/or services. It can be a word, a logo, a phrase or a tagline.
Nike is a famous example. There is the word NIKE, the Nike ‘swoosh’ logo and the phrase ‘Just do it.’ All of these are trademarks of Nike. If people see a running shoe bearing a Nike trade mark, they know the shoe comes from Nike. Other people can’t legally use a Nike trade mark on the same or similar goods. If they do, Nike has the right to stop that infringing use.
A trademark protects your branding.
If you register your trademark for particular goods or services, you can enforce your rights if someone else starts using your trademark (or something confusingly similar) for the same or similar goods or services.
If you have a registered company or business name, that is the name under which you carry on business, but it does not give you brand protection. Crucially, a business of company name does not give you clear rights to stop someone else registering a similar business or company name or a trade mark. Having your brand registered as a trade mark gives you a powerful business advantage.
Let’s say you (AB Smith) and your partner (CD Smith) have a business that cleans offices at night called ‘Round the Clock Cleaners’.
Your company name, AB and CD Smith Pty Ltd, is registered with ASIC (the Australian Security and Investments Commission, Australia’s corporate regulator) and the company is registered with the ATO (Australian Taxation Office) for tax purposes.
There will be a large number of companies that have a similar “smith” name. Your company name is not distinctive. But your brand name is what the public knows you as – Round the Clock Cleaners. Your trademarks might be the words ‘Round the Clock Cleaners’, a logo that has a clock with a mop and broom as the hour and second hands and the phrase ‘The cleaners that never sleep.’
Your trade marks are your branding and are key to your business’s identity. Those trade marks deserve protection with trademark registration.
Think of trademarks like security on your house. The more security you have, the more you’re protected.
Having a lock on your front door is a great start towards ensuring your home security. However, adding window locks and a security system can further enhance your safety measures and increases the value of your house.
A registered trademark for your brand is good. If your branding includes a distinctive logo (in tade mark language, a “device”) then registering the words of your brand and your and your logo is even better.
What is the difference between goods and services?
Goods are products such a can of Coke, a Toyota car or an iPhone.
Services are things you do for others such as a lawn mowing service, a builder, an accountant or a software developer.
Some things can look like both goods and services. For example, a software provider may provide goods in the form of software (computer programs) and services namely software installation and training services.
You choose the goods or services based on what your business supplies and what you’re looking to protect.
There are 45 classes of goods and services from which you can choose. Goods are covered by Classes 1 to 34. Services are covered by Classes 35 to 45.
Let’s go back to our business, Round the Clock Cleaners. This business offers a service – office cleaning.
Your first search might be ‘cleaning’. This will bring up a list of goods and services that include the word ‘cleaning’. This will include Class 37, which covers many applicable terms such as ‘building cleaning’, ‘cleaning of commercial premises’, ‘cleaning of offices’, ‘cleaning of property’, ‘office cleaning services’, etc. It also covers services that might be related to your business like ‘window cleaning’, ‘cleaning wall services’ and ‘carpet cleaning’. In your trademark application, you should select all the types of services you want to protect.
Maybe you want to eventually expand your business into advising building management companies on office cleaning solutions. Class 37 also covers ‘cleaning consulting and advisory services’.
So, registering the trademark ‘Round the Clock Cleaners’ under Class 37 would appear to be a great idea.
But maybe you’ve also identified an opportunity to develop a cleaning product under the Round the Clock Cleaners brand that effortlessly removes the ink that leaks from commercial photocopiers onto office carpets. It’s a spray that is released from a mop that you have specially designed for cleaning carpets.
Now you’ll want to register your trademark under both goods and services.
This time you search ‘cleaning’ and the list of goods and services that include the word ‘cleaning’ will come up again. This time you focus on goods.
Class 3 has ‘carpet cleaning preparations’, ‘chemical cleaning preparations for carpets’ and ‘sprays (preparations) for the cleaning of carpets’. So, Class 3 would cover the spray.
Class 7 has an ‘apparatus for use in cleaning carpets’. So, Class 7 would cover the mop. But is the mop electric? If it’s non-electric you might also want to consider Class 21 that has a ‘non-electric hand-held cleaning apparatus’ and ‘non-electric instruments for cleaning purposes’.
So, you may wish to register ‘Round the Clock Cleaners’ under Classes 3, 7, 21 and 37.
Let’s say in a few years a company wants to release a line of carpet cleaning products under the name ‘Round the Clock Carpets’ that are purely for household use. They want to register under Class 37 because it includes the term ‘carpet cleaning’. They have no intention of cleaning offices or office carpets.
In all likelihood, your registered trademark would be raised by IP Australia as an obstacle to acceptance of the other trademark. This is because you selected the service ‘carpet cleaning’ in class 37.
It is important to select your goods and services carefully as once the trademark application is filed it is not possible to expand upon the specifications selected. You must also make sure that you are using the trade mark on all of the goods and/or services that you have selected. If you are not using your trade mark in some or any of its registered classes, then it is possible that someone can complain to IP Australia that you are not using your trade mark in one or more of its registered classes. This could result in your losing your registration.
After you file your application or if you already have a registration and your want to add another class, you can file an additional application for the same trademark in the new class.
Also, it is most likely that a trademark examiner would consider ‘Round the Clock Carpets’ as too similar to your trademark ‘Round the Clock Cleaners’. The words and the services being offered are so similar that a member of the public could reasonably think that the businesses are the same or related.
That’s why you register trademarks. To protect your brand identity from being copied and prevent another business from cashing in on the customer goodwill you have worked hard to create.
Trademarks, copyright, designs and patents all deal with the protection of different types of intellectual property but they are quite different.
Trademarks protect the branding of goods or services. Words, logos, taglines and even things like smells, shapes, tastes and sounds can be registered as trade marks.
Copyright protects the original content that a person creates. Works like a book, a movie, the lyrics of a song, a podcast, a how-to video on YouTube or the code in software may attract copyright protection. Copyright gives the owner (or someone with the owner’s licence or permission) the exclusive right to reproduce the work and to stop other people reproducing the work.
Designs protect the overall visual appearance of new and distinctive whole products. A registered design does not protect the way the product works. But if you designed a new shape for a dishwasher tablet or a skirt with ruffles or the cut or decorative pattern on a shirt and the design is unique, it can be registered. If you have a registered design you can stop an unauthorised person from reproducing a product with the same design or appearance.
Patents protect a new invention, whether it’s a new device or process or substance. It must be new, inventive and useful. A patent cannot protect an idea. Patents protect how an invention works or functions. For example, in the field of heart medicine, there could be patents protecting new technology for detecting irregular heartbeats and patents on the way a new medication functions to repair heart muscle and devices for treating those irregular heartbeats. The owner of a registered patent can stop an unauthorised person from producing a product that functions in the same way that the patented product functions.
If a person uses a trademark the same as or deceptively similar to your registered trademark, you may be able to take action to stop them. You need to be able to demonstrate that the trademark you want to stop is being used in the same or a closely related class in which your trademark is registered.
Some brand names like Coca-Cola, Microsoft and Netflix are so well known that they cannot be used by another person or company in any class of goods and services, including the classes that have nothing to do with what they are famous for.
For example, if a pet food company released ‘Nike Dog Biscuits’ there is a reasonable chance a member of the public could wrongly assume that the Nike athletic company had released a line of pet food. Nike could take action to stop the pet food company from using the word ‘Nike’ on any of its products.
Yes, you can. We encourage you to do so for the protection of your brand. It may even be possible to apply to register your trademark if it has already been registered by someone else. But you will need to provide evidence that shows you have been continuously using your trademark from a date that pre-dates the registration of the existing registered trademark.
Now!
The best protection for your trademark is through registration. So, whether your trademark is one that you are going to use or one you are already using it’s best to apply for registration to give your valuable brand the best chance of protection. Don’t wait until someone else gets in before you.
Yes, you can. All you need to demonstrate is that you own and use, or own and intend to use, the trademark to be registered.
While you don’t need to start your business as soon as your trademark is registered you will need to demonstrate ‘use’ within three years of registration to maintain protection. Otherwise, another person or company could apply to have your trademark deregistered on the grounds you have not used it – called a “non-use application”.
‘Use’ is demonstrated through generating or attempting to generate revenue for a good or service in the class(es) in which you have registered your trademark. Just remember that things you do to set up your business like registering a business or domain name, having stationery printed or engaging a website developer are not considered ‘use’ that would protect you from a non-use application. You need to actually be offering your goods or services under or by reference to your trade mark.
Invent a word. Design a fresh logo. Be distinctive. A distinctive and original trademark that has little chance of being confused with another registered trademark has the highest chance of successful registration.
You could come up with a completely new word or abbreviate two words into one (but be careful of English language conjunctions – IP Australia are not keen on these). For example, LEGO was a derivation of the Danish word ‘leg godt’ which means ‘play well’.
Or you could come up with a word or phrase that is suggestive but not descriptive. WEET-BIX is suggestive of biscuits made of wheat. But WHEAT-BISCUITS would simply describe the relevant product. It would be too descriptive and most likely would not be able to be registered.
Or use a word out of context, like ‘CATERPILLAR’ for construction machinery.
Another strategy is to combine your ‘word’ with your ‘logo’ with the addition of a tagline. Sometimes the more elements your trademark contains the easier it is to register.
If you require any general assistance or support, please do not hesitate to contact us at enquiries@trademarkability.com.au. We are here to help and address any concerns or queries you may have. Applicants are entitled to direct access to our experts including a FREE 15 minute telephone consultation..