When choosing a name for your business, product or service you might want to keep Trademark issues in mind. After all, you’re going to be spending a lot of time and money promoting that name.
Can the name be Trademarked?
Almost any letter, word, signature, numeral, device, brand, colour or sound can be registered as a Trademark – as long as you can describe it in writing. 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.
What protection does a Trademark give me?
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 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 problems could arise when registering?
Sometimes there are problems with ‘descriptive marks’. 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’ 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.
Recently Australian courts have 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 marks’ but given the increasing online nature of business, they may not be the best way to protect your brand.
So how should I choose my name?
You are best choosing something original, that describes or represents your business and is memorable. Do not get too creative or complex as people need to remember your name and be able to remember and then find you.
Trademark words that are made up are probably the safest and easiest kind of marks to register and defend. You might even get lucky and create a word that becomes part of the language, like Windex or Google.
Whatever you decide, consider Trademarking or at least checking for Trademarks prior to naming and marketing your business. If someone has already registered your name or something similar, you might find you’ve got an expensive re-branding exercise on your hands!