3rd September, 2018

So you’ve been copycatted? a guide to trade marks

Having somebody else rip off your trademark to cash in on your hard work is frustrating. But there are a few simple things you can do to make sure it doesn’t become a nightmare.

Imagine this: you’ve worked hard over the past year or two to build a reputation with customers, but then somebody comes along with eerily similar branding to your business.

Suddenly, your potential customers are confused about which business is yours. If the offending party has a great SEO game they can take traffic from you overnight.

It was the case for Man With A Van.

In a 2015 interview with SmartCompany, co-founder Tim Bishop said the company needed to spend hundreds of thousands of dollars trying to stamp out copycats trying to leverage its early success.

The trouble is largely avoidable with the right IP approach from day one.

Before you strike out

IP Australia has recently released a new trade mark checker tool, which is a great way to see if your name or logo may have already been filed or registered as a trade mark in Australia. That also makes is a great way to get insights into trade marked business names and brands similar to your own.

You can also apply for trade mark protection with IP Australia if that’s what your business needs.

Trade mark attorney Blake Knowles told The Pulse that, while do-it-yourself searches are a great place to start (particularly in the ideation phase) and can identify obvious roadblocks, many businesses prefer to also obtain a professional clearance search once they have settled on their new brand idea.

“If you don’t do that, the risk is higher that you may be trading for four to five months and you get a nasty letter from someone saying ‘you’re infringing on my trademark and my rights’,” he said.

“That’s really a terrible and expensive inconvenience, especially if you’ve started to generate some momentum under the brand.”

Once you are comfortable that your trademark isn’t likely infringing on anybody else’s, the next step is to file for a trademark.

Knowles said most new businesses generally seek to protect their word mark (which is usually their core brand) and any associated logo that is important to them. In some cases it may be better of even necessary to register a combination of word and logo combined.

Knowles also said a common misconception among small business operators was that registering a business name had IP power.

“You’re obligated to register a business name if you’re trading under a name that isn’t your own, but while there’s an obligation to do that it doesn’t actually give you any rights,” he said.

“A business name is not a form of intellectual property and by itself doesn’t provide any protection for your brand.”

He said trade mark registration was better than only relying on first use, because it general gives the trade mark owner strong rights.

Enforcing your rights

Once you do have the strength of a registered trade mark behind you, enforcing your rights is a lot easier.

In fact, in many cases, all it takes is a letter and a light touch.

Knowles said most trade mark infringement cases which came across his desk were solved by sending out a letter on the practice letterhead – and it doesn’t need to be a threatening one.

“The majority of cases really are just honest mistakes – they choose a word which sounds good in the context of their industry, but they don’t do a clearance search, or understand some of the nuances of the law,” he said.

“If you’ve got a strong case and you’re dealing with a local infringer, they don’t want to end up in court any more than you do. If the writing is on the wall for them that they will probably lose if they go to court, we can usually resolve the situation fairly quickly.”

All in all, he says it may cost as little as $2,000 to resolve a clear-cut infringement matter. However, the cost to a business can be much higher if infringement is allowed to continue, particularly if it causes customer confusion on social media.

But it all comes back to having the trade mark as the legal basis for protection, which can also be important when it comes to international expansion.

Going international?

Where trade mark protection can be a bit tricky is when a company decides to expand to new markets.

A trade mark registered in Australia only gives you rights for Australia. However, your Australian trade mark application also established a date of filing for six months, which can be used to establish ‘priority’ for your trade mark when filed in other countries.

For example, if you file your trademark in Australia on 1 January, and then file the same mark in New Zealand any time up to 1 July, your NZ application can claim the same filing date as your Australian application.

But Knowles said very few businesses expand within six months, and as such they lose the benefit of the international priority system. This means they end up further down the ‘priority queue’ if they subsequently file for their trade mark after the six months.

“That can be important sometimes because all other things being equal, in most countries whoever files the trade mark first often wins,” said Knowles.

It’s why he says a cautious approach to international expansion is needed, and protecting trademark in international markets has many traps for the unwary.

“It can be a complicated area of the law and every country has its own pitfalls,” said Knowles.

“If you ever do get a letter from a foreign company saying you’re infringing their rights by using your brand or vice versa – you really need to get some professional advice on that.

“The best way to reduce the chances of a trade mark dispute in a foreign country is to register your trade mark in key markets as early as possible.”