4th October, 2017
One of the biggest decisions a business owner will make is choosing the brand IP for their new venture, but if they get it wrong it can lead to a lot of heartache.
Professional advice is important to make sure things get done right from the very beginning.
A mistake early on can have big ramifications later down the road. That’s why a trade mark clearance is strongly recommended for any new business about to launch under a new brand.
After all, there’s nothing worse than launching your shiny new brand into the market and then finding out somebody else has legal rights to it.
Unfortunately, a trade mark clearance search may not have a positive result. Someone else may already have rights in the brand, or something very similar.
Before consulting an IP advisor, there are a few things business owners can do to avoid disappointment, and more importantly, to avoid spending money on dead ends.
The better the name, the more likely someone has thought of it already.
Certain words are always popular for trade marks. Generally, they are short, catchy and have a positive connotation.
Think words like ‘Inspire’, ‘Aspire’, ‘Synergy’ and ‘Elite’. Chances are that if you want one of these names for your business, you probably can’t have it.
When deciding on a new brand, it always pays to have a Plan B, Plan C and Plan D.
In Australia, trade mark rights can be obtained through use, even if the owner doesn’t register the trade mark.
Using and registering a trade mark when someone is already using the same or similar name is like building a house on poor foundations – the whole thing might collapse one day.
Google should be used to rule out brand options as early as possible.
For example, if you are starting an accounting business and want to call it Inspire Accounting, put ‘inspire accountants’ into Google.
If there are already three other similar businesses in Australia using ‘Inspire’ for accounting services, cross it off your list.
It will never belong to you.
Even if another business hasn’t registered the trade mark, their unregistered trade mark rights will always pose a risk to you moving forward.
A lack of a good domain name can be a deal breaker.
If you can’t get a decent .com.au or .com (e.g. YOURBRAND.com.au) then your preferred brand name becomes a much less attractive proposition.
Try and secure domain names for your brand options as soon as possible.
If they’re available, snap them up straight away. Don’t wait…they may not be available the next day, let alone in the next month.
Trade mark rights are generally limited by national borders.
For instance, a registered Australian trade mark gives no protection in the USA, and vice versa.
Different traders can own an identical trade mark for identical goods or services in different countries, with each having enforceable rights in their own jurisdiction.
However, the Internet does not respect national borders. Social media in particular is becoming a battleground for brand owners, and is leading to an increasing number of legal disputes.
If someone in another country is using a brand that is identical or similar to one of your preferred options, consider whether this is likely to cause problems on social media.
If social media marketing is going to be important for your business, then it may be better to look at a brand that has less chance of causing confusion.
Similarly, even if there’s no similar business using an identical or similar name, consider whether you will be able to secure appropriate social media account names.
The Australian Trade Marks Office provides a very good electronic search of its database.
Every new business should do an initial screen of the trade marks database to see whether there are any ‘direct hits’.
A DIY search of the IP Australia database isn’t a substitute for a professional search. Often professional searchers will detect problems or risks that may not be considered relevant to the untrained eye.
However, if someone has already registered an identical or very similar mark for the same goods or services, that will give a fairly clear indication that your new brand could have some problems and other options may be more viable.
You’re now ready to talk to a professional advisor about the next steps for due diligence and protection of your new brand.
Hopefully by this stage you’ve cut out most brands that are going to be commercial or legal dead ends, so you can concentrate on options that have better prospects of success.