Most business owners are aware that they should obtain a trade mark for their business to protect their brand. In a perfect world, you would register all variations of your brand/business name and all of your unique product names.
However, in practice, business owners generally need to prioritise which trade mark to register due to budget constraints. It is particularly challenging when you have big plans for your business and want to register for many different goods/services, which often results in higher trade mark costs for even just one trade mark.
So which variation of your brand should be trade marked? In Australia, there are many different kinds of trade marks, including:
- Words
- Shapes
- Images
- Sounds
- Colours
- Scents
- Moving images
- Aspects of packaging
- Composite marks that combine any number of these.
You can learn more about each kind of trade mark on the IP Australia website.
For most Australian businesses, the choice is between a word mark (to protect your brand name) or a composite mark (to protect your logo, which is usually a combination of words and images). Trade marking the name of your business gives you different protections than trade marking your logo, so it’s a decision that you want to get right.
What does a word trade mark protect?
A plain word mark protects the words themselves, no matter what font, colour, or layout. If someone uses your registered words for your kind of goods or services, you can enforce your rights against them. This can be useful if you want the option to rebrand, or if the look of your packaging greatly varies between product lines. Because you trade mark the words, you have flexibility in the way that you present them.
This is why word marks usually give the broadest protection available, and for most businesses they become the first priority. However, word marks are also the hardest to register. Because protection is so broad, the words have to be distinctive on their own; they can’t depend on any visual elements. If your plain word mark is descriptive or generic, it’s not likely to be registered. You can learn more about the distinctiveness requirement from last week’s article.
What does a composite (logo) trade mark protect?
A composite (or figurative) mark protects the image used for your logo. This includes words, graphical elements, and the way they’re arranged together.
The distinctiveness of composite marks are assessed as a whole, and not by their individual words or graphical elements. This makes composite marks easier to register because there are more factors that will differentiate it from other marks. However, this also means that a composite mark provides narrower protection. A competitor, even if they use similar words, may not infringe your trade mark if they use similar/the same words in a completely different design.
You can also register a composite mark that only contains an image, and doesn’t include or protect words. If your logo sometimes uses words, and sometimes doesn’t, it might be worth registering a composite mark for each of these versions separately. This is because composite marks are assessed as a whole, so removing the words might differentiate the mark enough to require separate protection. For example, the athletic sportswear brand Nike has registered separate marks for the swoosh logo, and for a logo that includes both the swoosh and the word ‘Nike’ on top.
Should you trade mark your business name, product name or both?
Your business name is often different to your product name, especially if you have multiple product lines. This also means they take up different trade marks, and they may sit in different classes of goods and services.
Businesses often register the company name and leave their product name exposed, which is a risk if your brand’s reputation falls more on a flagship product rather than your business’ name.
Realistically, most start ups don’t have the budget to register everything at once. Every additional mark is an another application with separate application fees. This doesn’t mean that you have to give up on certain trade marks entirely, but it does mean that you have to prioritise the marks that will give you the most important protection.
Should you trade mark the word or the logo first?
There is no single right answer, but there are a few key considerations:
- If your name is distinctive, and there are no existing similar trade marks
- The plain word mark is usually the first priority. This gives you the broadest protection and flexibility for rebrands and different packaging.
- If your name is descriptive
- A distinctive logo that includes your name is more likely to be registered. Even if the protection is narrower than a word mark, it’s better than no protection at all!
- If customers know your product name better than your business name
- Protect the product name first, as customers are more drawn to the product than your business name.
- If the budget allows both
- Register both for maximum protection.
What next?
It’s best to get advice on your trade marks from an experienced lawyer. Our trade mark lawyers can tell you what each trade mark would protect in your situation and recommend what to prioritise. Book a free consultation for a fixed fee quote, so you can make informed decisions about what you can trade mark sooner.
If your plans reach beyond Australia, stay tuned for next week’s article, where we cover why your Australian filing is the foundation for everything overseas.
