How would you feel if after years of working on your business, you find that you can’t use your
brand name and can’t stop someone else from using it? There are various ways you can avoid the
nightmare, but let’s explore the simplest and most cost effective: registering your trade mark. We
will look at what a trade mark is; and examine a few reasons why you should protect your mark early
in the development of a brand.
What is a trade mark? If you have a logo, a name, shape(like a Coke bottle), aspect of packaging,
colour (like the purple associated with Cadbury chocolate) or sound (like the McCain’s ‘ding’) that
you use in marketing to distinguish your goods or services from others, you have a trade mark.
When you have a trade mark, you can rely on various rights of action to protect your interest. These
include passing off and misleading and deceptive conduct. You may be able to stop another person
from using your mark and to claim damages.
Why register in Australia? Registering your trade mark gives you the exclusive right to use it. If you
have a dispute with another trader, it is easy and therefore cheap to prove ownership. In most
cases, you should not have to do more than to send a letter of demand to stop the other person
from using your mark.
Having your trade mark registered gives you a monopoly right to use your mark, or brand, in
connection with specific classes of goods or services, in the country where it is registered. If you
don’t register, you are more likely to have to go to court and you need to prove the right to use the
mark, making the action more expensive. Failure to register might lead you to decide to abandon a
market or to abandon your mark, and all of the valuable reputation associated with it, in that
When should you register your mark? When you have developed a unique product or service and a
strong reputation, protecting your brand is essential to give you leverage in your market. You should
consider registration as soon as you have developed your idea, and before you spend time and
money on building your reputation in any market.
Does Australian registration protect a mark overseas? No. Registration must be obtained in each
country where you trade. Australia is a party to the Paris Convention, which can give your mark
priority, and to the Madrid Protocol, which can give you more economical access to overseas
protection and reduce the burden of managing your trade marks.
Can you protect your brand when it uses the reputation of a region or place? You cannot usually
obtain a monopoly on the name of a place or region with a reputation for specific goods or services,
like champagne, or like Lygon Street for restaurants. And to obtain a monopoly in other countries,
you need to register in those countries.
A reported stoush between American retailer Abercrombie & Fitch and Sydney-based business Bondi
Wash, highlights the need to have a well-considered export strategy. Bondi Wash registered trade
marks in Australia from 2013 for its personal care and cleaning agents, but was prevented from
registering in the USA in the classes it wanted recently because of prior registrations of Abercrombie
& Fitch that included ‘Bondi Beach’. If Bondi Wash had searched existing registrations and applied
for registration in the USA early, before entering the market, it could have avoided its dispute and its
need to enter into expensive negotiations only to decide to leave the potentially lucrative market.
It is possible to register a ‘certification mark’, to protect a class of goods or services in connection
with a particular place or region. If accepted, it enables the holder of the mark to licence the use of
the mark to regional producers. A well-known example is the Australian Made campaign. Its rules
for use include requirements for what qualifies as Australian made, that work in a similar way to
rules of origin that are set out in free trade agreements.
What about enforcement? Although most countries now have laws protecting intellectual property,
they have different attitudes towards enforcing those laws. Enforcement can be lax or variable and
therefore unreliable. That is another reason why your export strategy needs to address protecting
your brand right from the start. In countries where counterfeit goods and services are a real issue,
you should consider whether you want to use the same brand as you do in Australia. And as the
Bondi example shows, you should find out whether you can protect your brand even in places where
the enforcement of intellectual property rights is unproblematic. Even a reference to an Australian
icon can be inadequate to ensure you can protect it in other countries.
Other differences between countries exist that you might not think of and plan for. In Australia, as
in many other countries, the first to use a mark confers some protection: but in other countries, such
as China, the first to register has priority. In this case, before you start to look for distributors or
customers, you need your brand protected.
These issues directly affect the value of your business, so if you start to investigate exporting, you
need to gain a basic understanding of relevant laws in your chosen market, and look at protecting
your brand in your potential markets early.
If you would like help or advice about ways in which you can protect your brand, please contact us.