Trademarks for small to medium business: Protecting your business brand the same way big brands do
It is incredibly important to protect the unique branding of your business from copycat competitors.
Whether you’re a small or large business, your business brand, ideas, logos, name, and products or services are a valuable asset that should be trademarked, to avoid competitors introducing similar or identical services or products into the market.
This insight outlines the basics of trademarks and the importance they have for your small or medium business.
- Trademarks are a key asset to your business, ideas, services and products.
- Trademarks are not copyright, which is a different form of intellectual property.
- Under the Competition and Consumer Act (Cth)and the Trademark Act (Cth), you are entitled to take legal action if someone breaches your trademark by ‘passing off‘ their product or service as yours.
- It doesn’t matter if you’re a one-person startup or scaling up, knowing how to protect your intellectual property in business will ensure you’re able to leverage your online intellectual property for future growth.
- Similar names or logos may coexist, if the products and/or services belong to different classes.
- Trademarks allow businesses to take legal action against others attempting to mislead the public by imitating or pretending to be another business, and infringing trademark rights.
What are Trademarks?
A trademark is a way of identifying a product or service in the market, and legally protects a brand. Trademarks protect the intellectual property rights businesses or individuals have, in respect of the goods or services it/they provide. For example, your business may have a unique name, logo, phrase, slogan, symbol, scent, shape, sound, or jingle that you wish to protect, to ensure similar traders in the market can’t use your trademark.
The misconception that trademarks have no relevance for small, everyday businesses is incorrect. A trademark can be a small business’ most valuable asset, both by protecting the brand and distinguishing it from other businesses or brands in the market. Simply relying on the fact that you are a registered business will not give you exclusivity to your brand, products, or services.
If you find a trademark similar to your own that already exists, it may be possible for both trademarks to coexist, if the goods or services they are connected to are different. When starting up a new business, small or large, or when introducing new products or services, it’s important to take the step to trademark in the early stages, to protect your business and the brand you create.
However, some words, phrases or images cannot be trademarked. This is due to them having a common use available to everyone in regards to a product or service (for example, trademarking the word ‘warm’ for heater products, or ‘white’ for paper).
Reasons Trademarks are important to your business
- They give your brand or business the exclusive right to use your trademark in Australia, and the legal right to use the ® symbol (for registered trademarks), or the ™️ symbol (for unregistered trademarks) next to your trademark to show ownership. These can protect not just a brand name, but the symbols or logos that are attributable to your business and how it is recognised in the market. A popular example of this is the Nike “Swoosh”.
- They protect your brand and business against competitors providing similar goods or services, and who seek to register the same or similar trademarks, as your brand or business.
- They are a valuable business asset, not only providing you the right to use, license and sell the trademark, but as your business becomes more successful, the trademark will become more valuable.
- They give you the right to legally deter others from using your trademark or attempting to mislead the public with similar or identical names, logos, slogans, images, scents, shapes, sounds or other characteristics distinguishing your product or service. Section 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and section 129 of the Trademarks Act 1995 (Cth) entitle you to take legal action if someone breaches your trademark by ‘passing off‘ their product or service as your own.
- They have impacts on the goodwill of your business/brand – Consumers use your trademark to identify products with the expectation that all products bearing that mark will be of consistent quality.
- They are protected in all Australian States and Territories for an initial period of 10 years. They can then be renewed every ten years, for a fee.
In a recent Federal Court case, singer Katy Perry and Australian woman Katie Taylor (birth name Katie Perry) battled it out for the trademark of ‘Katie Perry’, which Ms Taylor was using for a clothing brand. The Court ruled in favour of Ms Taylor, after she filed a trademark infringement case in 2019 for pop-up stores selling the singer’s merchandise during her 2014 and 2015 Australian tour.
After receiving a cease and desist letter from the singer’s representatives in June 2009 regarding the brand name ‘Katie Perry’ (which they sent at the same time as applying for a trademark for the word ‘Katy Perry’), Ms Taylor officially trademarked her clothing brand. The Judge in the proceedings found that at the time Ms Taylor had started her brand, the singer only had a reputation for music and entertainment, with no evidence of her using the name in relation to clothing.
How do you trademark
A trademark normally requires registration with IP Australia, which is a government organisation regulating most intellectual property in Australia. To do so, the following is required:
- Are you eligible? The owner must be a company, individual, incorporated association, the trustee of a trust, a political body or government entity.
- Do you have to be an Australian Citizen? To apply for a trademark, you must reside in Australia or New Zealand (or have an agent that resides) and intend to use the trademark for goods and services.
- Is the word, image, phrase etc. you are trying to register already registered, or well-known, or prohibited? Search the correct databases to ensure that these do not already exist as trademarks, and you are not copying anyone else.
- Is what you are trying to trademark distinct enough from other goods or services in the same trade as your business or brand? Some words, phrases or images cannot be trademarked. Make sure your trademark does not have a commonly used word, phrase or image, that will prohibit you from obtaining a trademark.
- Have you decided what class of goods or services you will trademark under in your application? There are 45 different classes for goods and or services. You need to narrow the classes down to those that your goods or services fall into.
- What happens with your application? If the trademark is accepted, the details or your application, including the addresses, will be published on the IP Australia Register for Trademarks.
If you require advice or assistance in relation to a logo, phrase, image, or word unique to your business that you want to protect, please contact us today.
For further information, please call us on (02) 9189 5288
Craig Higginbotham and Nicole Sarraf
13 June 2023