How to Trademark a Business Name and Logo – Trademarking is an important step in setting up your business. Getting your Trademarks right ensures that your unique brand is protected from competitors. This guide addresses everything you need to know about registering your Trademark in Australia. For further information about any of these matters or for assistance with registering a Trademark, please get in touch.
Legal issues covered in this guide
Click on any of the questions below to jump to that section of this legal guide.
- Trademark Coverage
- Pros and Cons
- Trademarking with IP Australia
- After Trademark Registration
If after reading this guide you still have a question, get in touch as we’d love to keep adding your questions to this comprehensive guide.
What is a Trademark?
A Trademark is a way of identifying a unique product or service. To be official, a Trademark needs to be registered with IP Australia. You can Trademark your business name, your company name, your product or service brand name. In addition, you can also protect your logo and tagline as part of your Trademark registration.
What is the difference between a Trademark and Copyright?
Trademarking and Copyrighting are very different concepts.
Copyrighting stops someone from copying say the text of this feature article and using or posting it somewhere else. A Copyright is automatically created as soon as a “work” is created. It applies to text, images, sounds, video, etc.
Trademarking is more restrictive. It stops someone from using a name, phrase or logo in particular circumstances. Users of Trademarks want consumers to associate a name, phrase or logo with their particular product or service. And they want to stop anyone else using these words or images.
What is the difference between a Trademark and Patent?
Trademarks and Patents serve two very different purposes.
A Patent is used to protect new inventions, methods, processes, substances or devices. For example, a Patent might be used to protect a new software system, a new design of ergonomic chair or a new drug for dealing with blood pressure.
This is very different from a Trademark. Rather than protecting inventions, Trademarks protect words, phrases, logos or other things that identify your brand. Many businesses may need to use both Patents and Trademarks to protect different parts of their intellectual property.
What can be Trademarked?
Think of a Trademark as your business’s brand or identity. It is how you show your customers who you are. Therefore, a Trademark can take many forms including: word, letter, phrase, number, logo, picture, sound (e.g. a jingle) or movement (e.g. the jumping people in Toyota ads). Even perfume scents have been registered as Trademarks in Australia.
Trademarks can be rejected for being abusive or for being “likely to deceive or confuse”. For example, using a famous face or name or a domain name you’re not entitled to use. These pitfalls can be avoided by making sure your Trademark is not ‘substantially identical’ or ‘deceptively similar’ to an existing Trademark.
You can search for Trademarks by visiting IP Australia’s website to make sure your mark doesn’t already belong to someone or is not too close to someone else’s. It will be rejected if you are too close to another registered Trademark. You can also apply for a Trademark using the Legal123 service and ask us whether your Trademark is likely to be able to be registered.
Can you Trademark intellectual property?
A Trademark is a form of intellectual property, but not all forms of intellectual property can be Trademarked. Intellectual property that distinguishes your business or your goods or services – such as a word, phrase or logo – can be Trademarked.
Trademarks are not appropriate for other forms of intellectual property. For example, inventions and processes (such as a new software system or a new design of ergonomic chair) may be protected by registering a Patent. Or creative content such as books, movies and music may be protected by Copyright.
Does a Trademark cover Australia only?
Yes, an Australian Trademark only provides protection in Australia.
Can I register a Trademark internationally?
Yes, it is possible to register a Trademark internationally. But the process can be quite complex and lengthy.
The first option is to make separate Trademark applications in each country you require Trademark protection. This means going through each country’s specific registration process.
The second option is to apply for Trademark protection in Australia first (before applying for international protection). Then take advantage of the Madrid Protocol to apply for Trademark protection in a number of countries in the one application. But the Madrid Protocol only applies in countries that have signed up to it.
Should I Trademark my business name, brand name, logo or tagline?
This is up to you. You should consider registering Trademarks to protect any features that you use to identify your brand. Many businesses register a number of Trademarks, for example, one to protect their brand name, another to protect their logo and another one to protect a tagline.
Pros and Cons
What are the benefits of Trademarking my business name or logo?
A Trademark can be an extremely valuable feature of your business. It enables you to protect your brand and to prevent anybody else from imitating it.
For example, if Billabong had never registered a Trademark, then anybody else could make imitation clothing or products, print “Billabong” on them and sell them. That same imitator could even register Billabong Trademarks themselves and could then prevent anyone else from producing Billabong products, including the company/people that created the Billabong brand in the first place!
By registering a Trademark you take control of your brand. If you ever want to sell your business a Trademark enables you to sell your brand. Without a Trademark you don’t really have a brand to sell – because there is nothing preventing that purchaser from just imitating your products anyway.
What protection does a Trademark give?
Trademarking should not be confused with business name registration or company registration. Business name registration and company registration give you the right to use the name itself but do not protect the right to do a particular type of business. Only Trademarking your business name (and any associated intellectual property, such as logos) will give you the registration protection from others copying your name and business activities.
A Trademark legally protects your business name against other businesses using it. When you register a Trademark you get exclusive use of that Trademark throughout Australia and it is protected for an initial period of 10 years.
It’s important to remember that you don’t get ‘control’ over the mark, you just have the right to use it as a Trademark to distinguish your goods or services from those of others. Another person can use the word as long as they aren’t using it to sell the same kind of product or service as you and as long as they don’t use a logo or look like you and confuse the general public.
For example, you might have registered the right to use “Awesome” with a logo to distinguish your shoes. But someone else can register “Awesome” as the Trademark for their hamburgers, provided their logo looks different from yours and is not likely to confuse people.
What are the risks of not Trademarking?
If you do not register a Trademark then you run the risk that anybody else will be able to copy your brand – and could even put you out of business.
For example, you might sell ethically sourced clothing under the brand name “Fairwear” and might spend a lot of time and money travelling around the world to visit factories and search for the right products. If you do not Trademark your brand, then somebody else could start selling their own clothes with “Fairwear” labels on them – and their clothes might not even be ethically sourced.
Not only will they benefit from all of the time and money that you have invested in finding products and building your brand, but they could also cause significant damage to your brand when consumers start receiving cheap inferior products with “Fairwear” labels on them.
This imitator could go even further and register the “Fairwear” Trademark themselves. Then they would have the legal right to prevent you from using their “Fairwear” brand!
Is Trademarking necessary?
You are not legally obliged to register a Trademark. If you are happy to accept the risks associated with not registering your Trademark then you may choose not to do it.
Some startup businesses that are operating on a tight budget (and that do not have much of a brand reputation to start with anyway) may choose not to Trademark in the beginning. However, as the business grows they usually reach a point that they decide it is necessary to register their brand as a Trademark.
Trademarking with IP Australia
How do you Trademark a business name or logo?
Applications for Trademarks in Australia need to be made online through IP Australia. You’ll need to provide a variety of information, including:
- Your personal or company name and contact details
- Representation of the Trademark (word, logo, tagline, etc.)
- Description of the goods and/or services to which it will apply
- Category (or ‘Class’) of goods and/or services for which you are applying, and
- Translation/transliteration of any part of your mark that is in another language
It is important that your application is accurate (for example, it should accurately represent the Trademark and the goods/services to which it applies) or you risk not getting the protection that you need.
How much does Trademarking cost?
The IP Australia Trademark application and registration fee is $250 per Class (effective 1 October 2020), with registration lasting for 10 years.
The more Classes you select in your Trademark application, the more your Trademark will cost. However at the same time, it is important that your Trademark covers all of the Classes you need it to, or else you will not have the right business protection.
What are Trademark Classes?
The cost of Trademark registration varies depending on the number of “product categories” or Classes you want to cover.
In total, IP Australia has 45 Classes. For example, products such as pharmaceuticals, paints and varnishes, hand tools, vehicles, firearms, musical instruments, building materials, etc. Or services such as insurance, telecommunications, education, medical, etc.
Generally, most Trademark applications are for 1 or 2 Classes.
Is Trademarking worth it?
This is up to you. There is no doubt that Trademarking provides significant protection for your brand and business. And the costs of Trademarking are modest compared to the value that could potentially be lost from someone copying your brand and business.
How long does Trademarking take?
The good news is that as soon as your Trademark application is submitted to IP Australia your Trademark protection starts. The bad news is that it could be months before your Trademark is officially approved.
Most Trademark applications are assessed by IP Australia three to four months after they are submitted. Your proposed Trademark will then be advertised and other people or businesses will have the opportunity to oppose your application.
If no successful oppositions are lodged, then your registration will be finalised a couple of months later. So generally, the earliest that a Trademark registration will be completed is six months after the application was originally submitted.
What problems could arise when registering?
To register a Trademark it needs to be able to “distinguish your goods or services, in the course of trade and commerce, from those of another person”. That means you cannot look like another person’s or business’s Trademark. You could maybe spell your mark in a different way – such as ‘xhibit’ or ‘xciting’ or ‘trademarx’ – or use a special logo, colour or other way that makes the words your own and represent your business.
Problems can arise for “descriptive” Trademarks. A “descriptive” Trademark is one that is not particularly unique, but is more or less a description of what your business does. For example, The Tyre Shop for a shop that sells tyres; or Burger House for a restaurant that sells hamburgers. These types of “descriptive” Trademarks can be difficult to register and enforce – more distinctive Trademarks, such as Uber or Qantas, are easier.
In addition, Australian courts have recently dealt with new infringement issues in relation to Trademarks as they appear in Internet search results. Internet search results list websites in a uniform text size, colour and font. Without different colours, unique lettering or maybe a distinctive logo there is no way a “descriptive” Trademark can distinguish your goods.
Not a problem for Panadol or Vegemite. But in 2014 the Federal Court found that the Trademark “Lift Shop” had not been infringed when used in this way by their competitor to describe a retail business that sold home elevators – even if the intention had been to divert customers to the competitor’s site.
You can still register some “descriptive” Trademarks but given the increasing online nature of business, they may not be the best way to protect your brand.
After Trademark Registration
When can I use the Trademark ™ and Registered ® symbols?
Use the Trademark ™ symbol when you plan to Trademark your brand and submit your application to IP Australia. Use the Registered ® symbol when your Trademark has been approved and is officially registered.
What should I do if I receive an overseas registration letter?
If you’ve just registered your Trademark with IP Australia – beware. There’s a nasty little scam going around. You may receive a letter that looks like the one on the left.
This fake Trademark registration agency is trying to charge you 955 Euros to file your Trademark in Europe. The letter looks legit – it will have an image of your newly registered logo front and centre – and it will be a physical letter, not an email. The letter will be addressed to you and your details will be correct and not part of a mass junk mail campaign.
This is one of many similar type scams. The IP Australia website lists 24 different fake Trademark registration agencies, in countries ranging from Germany to Liechtenstein, with official sounding names like: Intellectual Property Organisation, European Patent Office and Community Trademark Office. And the ACCC’s ScamWatch is also warning Australian businesses to beware fake invoices for domain name renewal, trade directory listing, advertising services, etc.
As soon as you register your business Trademark and logo with IP Australia, your contact details are listed on a public register on the IP Australia website. These fake overseas agencies are “crawling” the IP Australia website for new listings, collecting your contact information (and logo image) and generating fake invoices. As the scammers are located overseas, Australian regulators do not have jurisdiction to shut them down.
IP Australia has a warning on their website and recommends reporting the fake invoices to both them and ScamWatch. Do not pay any invoices, respond to any emails or letters requesting further payments for your Trademark registration.
We hope you found this guide on How to Trademark Your Business Name and Logo helpful.