When you’ve been working with businesses for as long as we have, you come across some heartbreaking situations. None more tragic than people whose ideas and businesses were thriving, with no end in sight, only to come undone by something they never saw coming.
What is involved in successfully trademarking a business or product?
When setting up a new business in Australia, the typical process is to get an ABN, buy domain names and work on your pitch. If you are seeking investment, then you are probably concerned about protecting your intellectual property when pitching, and so getting one or more trademarks is usually top of your list. And when money is tight, people often go about undertaking that process themselves, or assume that engaging a professional to help them will cover any potential risks.
After all, the IP Australia site is easy to use and a professional will know what to do, right?
There are two parts to this article, designed to help you avoid the most common mistakes when it’s time to trademark your brand. First we’ll explore some important considerations for those of you in the early startup days. Then, we’ll bring you up to speed on some of the concerningly common issues that happen to rapidly successful businesses, when it seemed as though nothing could get in their way.
We’re also going to explore what to watch for when DIY-ing trademarks and engaging trademark professionals. It might just save you a whole lot of stress, millions of dollars and the hair on your head (we’re not kidding).
Trademark your brand and avoid these nightmares
Imagine this. You love the name you’ve come up with for your idea – your product, software, service, concept, business name, or whatever it is. You go to IP Australia to run a check in their easy to use search facility and nothing comes up. Brilliant! You’re good to go. Or are you?
Despite there being no apparent issues, trademarks don’t just apply to words or names. Sounds, symbols, shapes and logos can also be trademarked. If your brand sounds the same as another trademarked brand, or is visually or conceptually similar, that may be a problem.
If your initial quick search online looked good and you applied to register for the trademark at that point, you may find that your application is either opposed or not accepted by IP Australia. By the time you realise this, most people have moved forward anyway, in anticipation of the approval. When your application is rejected or opposed, time has been lost, and any brand development work associated with it, will need to be canned.
Another mistake we see a lot is when people have chosen trademarks that are generic or descriptive. When you apply for a trademark like ‘Sydney Surf Store’, it will be extremely hard to prevent your competitors from using the exact same phrase, even if your business name has been registered as a trademark. The added downside is that it can be hard to maintain your position online because your competitors can use these types of phrases, without consequence. They can also target phrases like these as part of search engine optimisation strategies to rank higher online, such as Google Ads.
The third common mistake we see is registering a trademark in the wrong class. For example, plenty of people think that if you sell shoes, you would register a trademark for footwear. But, if you don’t make the shoes, you should apply for a trademark for the retailing of shoes. In the event you selected the wrong class, it could be years later when you discover someone new to the market is selling shoes using your mark and you discover that you don’t have the protection you expected. Imagine someone else getting the trademark you thought you already had.
We also see issues arise when people apply only for trademarks in Australia and New Zealand, with a view to apply internationally later on, when the budget isn’t quite so tight. While a trademark may be available in Australia and New Zealand, it may not be in other parts of the world. We’ve seen this become an issue for numerous businesses.
While the most obvious workaround might be to then set up different brand names for different countries, this creates additional issues for the business owner. For example, if you sell a product, you would then need different logos and packaging for the second brand, as well as two different websites and different social media accounts. It creates more work and if you have potential investors or partners ready to go, it can impact the perceived viability, particularly when the success to date is associated with the original brand.
Hitting your peak or pulling on the brake?
Imagine running a business that you have been pouring your blood, sweat and tears into, excited for the future. After a few years, you manage to hit all the big, remarkable milestones you set out to. Perhaps you have distributors, partnerships, licensees across the world, and there is considerable, consistent demand for what you have created.
Then, out of the blue, you receive a letter of demand for trademark infringement. It is from a large international brand notifying you that you have 7 days to recall all of your products from the market, including all traces of their trademark. That includes any marketing material on your website, any print material along with having to delete every social media post that mentions the infringing trademark.
When this happens, it is devastating. While it can definitely happen early on in the business journey, it is when your business grows and attracts more attention, that these cases can do even more damage. If it doesn’t ruin you financially, it will certainly create significant stress and put any other new developments on hold.
These aren’t the types of cases that we hear about on the news or in business groups. People rarely talk about these issues publicly. These tragedies typically play out privately and only people like us see the consequences up close.
At this point it’s worth pointing out that these mistakes aren’t made only by DIYers or people who know little about business. They are also experienced by highly intelligent individuals who engage professionals to assist them.
But how is this possible when a professional was involved?
These troublesome outcomes tend to occur when people have either DIY-ed their trademark or when the person engaged to register the trademark is not regularly involved in trademark disputes.
Over our collective 30 years of working in intellectual property, we have witnessed hundreds of ways in which trademarks have been opposed or challenged. When you have worked on both sides of trademark infringement disputes you are increasingly alert to how these situations arise.
So when it comes time to help register a trademark, we know what questions to ask and what to watch out for. In fact, it starts with the discussions we have with our clients. We ask a lot of questions. That’s because no-one needs just a trademark. They need a trademark strategy.
A solid trademark strategy | When should you trademark your brand?
If you have an idea for a brand name for your product, service or anything else you wish to trademark, before you go out and secure domains and your ABN, you must first investigate the feasibility of your intended trademark.
We start this process by undertaking the initial searches and then raising any issues that we see might be problematic. We discuss those issues with you and ask you some more questions.
Sometimes the initial searches might indicate that you will need to consider other names or marks, and then we run those initial searches again. If international trademarks are part of the big picture plan, we run searches for those too.
However, we don’t just indicate if a trademark is available or unavailable. In the event there are obstacles, and you want to investigate whether those obstacles can be overcome, we provide you with strategies for how to go about that.
We’re always thinking about the bigger picture when looking to trademark your brand. We ask questions not to try to point out all the obstacles in front of you but rather, help you find a path that will be the least risky.
If your brand is not likely to be approved or enforceable, we may need to assist you to come to a brand that we think will be feasible. We consider this not only from a trademark perspective but also from a commercial and enforceability perspective. If it looks good, we will file your application.
Related articles: What is the best way to register your trademark overseas?
Should I Do My Own Trade Mark Application? – Level Up Legal
Choosing someone to secure a trademark can equate to putting your business and its future, in someone else’s hands. We are Brigit Rubinstein and Zan Lee, intellectual property experts who specialise in trade mark registrations and comprehensive brand protection for startups, small and big businesses. Ready to trademark? Book a complimentary initial call with us here.
