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This week we’re introducing a new regular column for 2018, focused on legal issues for creatives. To kick things off, let's take a look at trademarks.
Why trademark your business name?
Trademarking your business name can help ensure your customers identify your product or service as unique, and ensure your business is – and remains – distinguishable from all others. You can trademark your business name on a national and/or international level, after considering whether your business will operate locally, nationally or globally.
The benefits of registering your business name as a trademark include:
Protection of your name against imposters and copycats
A secure brand on social media. Facebook, Instagram, Pinterest, Twitter and other social media venues have policies in place to protect you against abuse.
Trademarks are easy to renew.
Trademarks build brand loyalty and may even evoke pride in employees.
Trademarks can safeguard against cybersquatting (domain names that are identical or similar to your trademarked name).
A business name alone does not give you exclusive trading rights or ownership over that name. A trademarked business name can be extremely useful as a marketing tool; it gives your business an identity, or brand. You will have ownership and exclusive rights to the commercial use, license or sale of your business name as a trademark. No one else in Australia will be able to commercially use your business name within the class of goods and services it is registered under. It will carry intellectual property protection and you may use the trademark symbol (a capital R enclosed in a circle) following your business name, alerting others that your business name is a registered trademark. This can help build the value of your business, and the trademark may hold value in itself. If another trader tries to pass off her own product or service using your trademark, it will be an offence under the Competition and Consumer Act 2010.
It’s possible to protect your business name as a trademark without registering it, if your business has been using it for a sufficient period of time and has built up a significant reputation. However, in the long run, protecting a trademark without the benefit of registration is likely to be much more difficult and expensive.
New businesses registering their business names will be alerted to your trademark when they use IP Australia’s TM Check to ensure they do not infringe on an existing registered trademark.
The negative aspects of registering your business name as a trademark include the hassle of dealing with government agencies, the time it takes to jump through legislative hoops and the cost—which is not large, but not insignificant either.
How to register
To register your business name as a trademark, use the Australian Government IP Australia online services. You’ll be offered different cost structures depending on whether you use the TM Headstart service or the Standard filing service; application costs range from $130 to $480 per ‘class’. The ‘class’ refers to the category of goods and services, which are divided into forty-five classes. To discern which class/es you need to register your trademark under, think about the exact nature of your business and consider the following:
Where do you derive your business income?
What is the nature of your business?
What are you known for by your customers/clients?
What products or services does your business provide?
Once your trademark application is approved, there is no further cost to register the trademark.
It takes three to four months for IP Australia to examine your trademark application and ensure that it meets legislative requirements, is under the correct class and so on. Refunds are not given for errors, so it is important to get the application perfect the first time around. You might save time, energy and money by engaging a lawyer to do the application on your behalf; if you are moving your business to a global platform, a lawyer’s advice on trademarking overseas will be indispensible.
Once your trademark application meets all requirements, it will be registered and you will be notified in writing.
Maintaining your trademark
If you do decide to trademark your business name, you must actively use it in the course of trade. If you do not use it, the trademark can be removed on the grounds of non-use. (Trademarks are not allowed to be registered to simply stop other traders from using them.)
Once registered, your trademark remains for ten years from the filing date. You can renew your trademark from twelve months before the renewal is due, or up to six months after. Current on-time online renewal fees are $400 per class, however there will be extra fees if you renew after the due date.
Weighing up the pros and cons
Overall, trademarking your business name is usually worth the time, effort and cost. It ensures the business you have built will remain solid and hold its reputation for the long term, and you won’t need to change your name or branding down the track.
Jessica Kerr is the director of Sinclair + May, a female-led, boutique commercial law firm that works extensively with the creative industry. Jessica set up Sinclair + May with a view to do law differently and make legal services accessible for small businesses. You can follow Jessica on Instagram for useful legal tips or visit Sinclair + May at sinclairmay.com.au.
Photo by pixabay.com