Why is a trademark important for your brand?
Failing to protect your brand from a legal standpoint is a common mistake that costs many people time, money, and precious brand equity. As part of our brand strategy work, we help clients develop the right strategy to protect their brand as a trademark.
So, how much do you know about brand governance, and how safe is your brand?
Trademark
The TM symbol signifies that an organisation considers their brand as being unique, owned or protected by them. It’s important to note that TM is not a formal method of protection – you can put TM on anything and it doesn’t give you legal context. It acts as an amber light, acknowledging that you consider your brand as belonging to you, as part of your intellectual property.
While TM has no legal bearing, it’s still important to place TM on any intellectual property that you release into the world. If you don’t, you’re admitting that you don’t see your material as a piece of formal intellectual property that you are willing to protect.
If you are planning on registering your brand or material as an official Registered Trademark, it is vital that you use TM to protect your intellectual property in the interim.
Registered Trademark
The registered trademark symbol indicates that the business owner has a formal certificate of registration for the brand. These are quite hard to obtain, and as such it is illegal to use a registered trademark next to a brand you don’t officially own yet.
If you don’t have a brand that is registered, or that can be registered as a trademark, this is a huge barrier to the growth of your brand. Your brand could already be in use in the market by someone who has registered it, or by someone who hasn’t registered it but has used it before you have. In the event of a trademark dispute, the party who used the brand name first has common law rights to this trademark.
Imagine spending money building and marketing a brand, only to find you can’t have it, or need to change it. This can strain a business emotionally, financially, and destroy the momentum of your brand within the market. When you begin your branding journey, you must engage in trademark and common law searches, to make sure that the brand you create is a brand you can protect.
Copyright
Copyright acknowledges authorship of a particular product, piece of writing, or piece of information. The key thing to remember when dealing with copyright is that the creator owns the copyright, regardless of how much they were paid, or the agreement that you engaged in.
If you outsource the creation of intellectual property like websites and logos, you need to seek a document that formally assigns copyright to you or the relevant entity that protects and holds your intellectual property. Failing to request a document assigning copyright is a key pitfall that many business owners fall into. Copyright can be assigned, needs to be assigned, and should always be negotiated as part of the initial agreement.
Going Global
The growing online global marketplace opens up many opportunities, but also increases the risks involved in building a brand.
You need to be aware of both the incoming and outgoing economy of your brand. Who is coming into your market, and could they be perceived as similar or deceptively similar to your brand? Are they operating under the same name, using the same language, or the same function?
It is vital to ensure that others are not contravening your trademarks, just because they’re online and selling in your market. In the same vein, you must also be aware that as an outgoing economy you operate in other people’s marketplaces.
Always consider the global issues and performance of your brand – remember to check the market for incoming competitors, and always consider your outgoing behaviour when interacting in other markets.
At the end of the day, ask yourself –
Is your brand unique, distinct and protectable?
Trademark Types
There are different types of trademarks you can register, and it depends on your brand’s identity and trademarking strategy as to which type is relevant for your business.
Wordmark
A wordmark is simply typed in standard character format without regard to the font, style, size or colour. In a trademark application for a wordmark, you are essentially seeking registration of the wording (or lettering) without regard to its style, design, font or any graphic features. In other words, you are protecting the wording, and not the logo. For example, the David Jones brand.
Design mark (Fancy mark)
A design mark application would be appropriate for a distinctive logo with particular graphics and/or stylized wording. Keep in mind that a registration of a design mark requires you to use the exact same design over the course of the next several years in order for you to maintain and renew your registration. Changing the design may warrant the filing of a new trademark application. For Example, the FedEx brand.
Figurative mark
A figurative mark is a combination of words and a logo. You can choose to register the words as a separate wordmark as well as the logo. This will give you the broadest possible protection for your trademark. It also enables you to retain protection for the words separately even if you change your logo. For example, the Vegemite brand.
IP Australia – Goods and Services Classes
When you register a trademark, you need to identify the classes that are relevant for your goods/services. Trademark registration only provides you with exclusive rights to use your trademark in connection with the goods and services identified in your application. Below is a list from IP Australia of the different classes for both Goods and Services.
Goods
Class 1
Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.
Class 2
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.
Class 3
Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.
Class 4
Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.
Class 5
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 6
Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes.
Class 7
Machines, machine tools, power-operated tools; motors and engines, (except for land vehicles); machine coupling and transmission components, (except for land vehicles); agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.
Class 8
Hand tools and implements (hand-operated); cutlery; side arms, except firearms; razors.
Class 9
Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers’ masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus.
Class 10
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for persons with disabilities; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.
Class 11
Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes.
Class 12
Vehicles; apparatus for locomotion by land, air or water.
Class 13
Firearms; ammunition and projectiles; explosives; fireworks.
Class 14
Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.
Class 15
Musical instruments; music stands and stands for musical instruments; conductors’ batons.
Class 16
Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks.
Class 17
Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.
Class 18
Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.
Class 19
Materials, not of metal, for building and construction; rigid pipes, not of metal, for building; asphalt, pitch, tar and bitumen; transportable buildings, not of metal; monuments, not of metal.
Class 20
Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.
Class 21
Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paint brushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.
Class 22
Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor.
Class 23
Yarns and threads, for textile use.
Class 24
Textiles and substitutes for textiles; household linen; curtains of textile or plastic.
Class 25
Clothing, footwear, headwear.
Class 26
Lace, braid and embroidery, and haberdashery ribbons and bows; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.
Class 27
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile.
Class 28
Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.
Class 29
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yogurt and other milk products; edible oils and fats for food.
Class 30
Coffee, tea, cocoa and substitutes therefor; rice, pasta and noodles; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, treacle; yeast, baking-powder; salt, seasonings, spices, preserved herbs; vinegar, sauces and other condiments; ice (frozen water).
Class 31
Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animal; malt.
Class 32
Beers; non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages.
Class 33
Alcoholic beverages (except beers); alcoholic preparations for making beverages.
Class 34
Tobacco and tobacco substitutes; cigarettes and cigars; electronic cigarettes and oral vaporizers for smokers; smokers’ articles; matches.
Services
Class 35
Advertising; business management, organization and administration; office functions.
Class 36
Financial, monetary and banking services; insurance services; real estate affairs.
Class 37
Construction services; installation and repair services; mining extraction, oil and gas drilling
Class 38
Telecommunications services.
Class 39
Transport; packaging and storage of goods; travel arrangement.
Class 40
Treatment of materials; recycling of waste and trash; air purification and treatment of water; printing services; food and drink preservation.
Class 41
Education; providing of training; entertainment; sporting and cultural activities.
Class 42
Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software.
Class 43
Services for providing food and drink; temporary accommodation.
Class 44
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, aquaculture, horticulture and forestry services.
Class 45
Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.
For more information about trademarking in Australia, visit IP Australia.
We are brand specialists with over 30 years experience in brand governance. We can help to protect your brand, develop trademarking strategies or create a new ownable brand identity. Let’s work together.
