The Industry-Specific Trade Mark Tip: Why Fashion Brands Don’t Need to include ‘The Label’ in their Trade Mark Applications

The words ‘The Label’ have become a popular inclusion in a number of Australian fashion brand names, but does this phrase add anything of value from a trade mark perspective?

The key to answering this question lies in the fundamentals of trade mark registration and understanding which elements can and can’t be registered.

My own trade mark strategy also provides a clue. 

My business operates as Mark My Words Trademark Services, but that name is not a registered trade mark.  However, I have registered ‘Mark My Words’ as a trade mark in Australia and the reasons for this will become clear.

In this article, I’ll first detail some trade mark registration basics and then discuss specifics about having the moniker ‘The Label’ in a fashion brand name in terms of trade mark registrability. 

Trade mark registration basics

• A trade mark distinguishes a trader’s product or service from other competitors in the market and once it has been successfully registered, the owner has enforceable legal rights to the exclusive use of that mark for the specific goods and/or services nominated in the application. Fashion related trade marks could be filed to specify Class 14 – covering jewellery goods
• Class 18 – covering bags, wallets and similar
• Class 25 – covering clothes, shoes and hats
• Class 26 – covering clothing accessories
• Class 42 – covering clothing and fashion design services

To qualify for registration, the mark needs to be sufficiently different from any other mark being used in the same industry.

Commonly used and descriptive or generic words or phrases can be challenging (and at times impossible) to register as trade marks.

Fashion companies using ‘The Label’ in their brand name

There’s a long list of Australian fashion brand names which include the phrase ‘The Label’, including:

• SNDS The Label
• Sir The Label
• Runaway The Label
• Eliya The Label
• Finders Keepers The Label
• Kivari The Label
• MR The Label

Assembly Label is another popular brand which includes the descriptor ‘Label’ in its name.

These brands are recognised in the fashion industry by their full names as well as by the abbreviated versions (ie without ‘The Label’).

Why do so many fashion companies use the phrase ‘The Label’?

‘The Label’ has become an identifier for the fashion industry.

The word ’label’ has historically been associated with the higher-end of the market. Brands that have the words ‘The Label’ in their name will be hoping to benefit from this association that signals exclusivity, prestige and aspiration.   

Most people in Australia who have an interest in fashion will immediately associate a name containing those words with a clothing company.

Social media distinction is another plus of having the words ‘The Label’ in a brand name.

It’s easier for brands to secure social handles eg Instagram and domain names and to build their digital presence and reputation if their full name contains the phrase ‘The Label’.    It’s also easier for consumers to do online searches for businesses that contain this add-on.  

Search engine optimisation (SEO) strategies can also be structured around the full brand name with ‘The Label’ identifier to help fashion companies get found online more easily in a highly competitive market.

That said, it’s not always necessary for fashion brands to register trade marks based on their full names that include ‘The Label’.

Why fashion and apparel companies may not need to include ‘The Label’ in their trade marks.

An ordinary or generic phrase is available to any trader and therefore can’t be owned by any single entity as a trade mark. 

The words – ‘The Label’ – are descriptive and therefore it is highly unlikely that IP Australia would accept an application to register a name for simply “The Label”.  A company would very likely waste time and money attempting trade mark registration. 

What makes a good trade mark?

The value of knowing how to select a good trade mark cannot be overstated.

As mentioned earlier, my business is known as ‘Mark My Words Trademark Services’ and I use this full name in my communication and brand-building strategy.  However, I have only registered ‘Mark My Words’ as a trade mark.  The distinctive element has been trade marked to secure the maximum legal protections for my valuable intellectual property asset.

The words ‘trademark services’ are descriptive, they apply to all operators in my industry and aren’t exclusive to my brand.  Whilst IP Australia would likely have approved an application for our full company name, this could be limitative to the company in the future. For example, our name does get abbreviated to simply Mark My Words, often. With “trademark services” being a service description, this strategy provides us flexibility to promote the trade mark as “Mark My Words® Trade Mark Services.

The same principle applies to clothing companies whose name includes the phrase ‘The Label.’ By securing registration of the distinct aspect of a brand name, the holder could then use NAME® the Label, and likely form a stronger position if or when needing to enforce those rights.

  In fact, a registered trade mark is the only way that a brand can confidently protect its identity, its reputation and its rights to exclusivity – and defend those rights against infringers. 

Why the choice of business name is crucial

The first thing that a business owner should do before launching a brand is to ensure that no other party already holds the rights to the name.

Our definitive guide on business names, company names, trade names and domain names in Australia gives good insights into the differences between the various names. 

You’ll also find useful information on trade mark searches, what could go wrong if you don’t register a trade mark and the importance of choosing the right business name on our website.

Other industries where generic descriptors can be problematic for trade mark registration

Trade mark protection is greatest when the distinctive element has been protected. 

This applies to all industries, not just the fashion world, as the requirements and principles for trade mark registration apply across the board. Generic and overly descriptive trade marks are unlikely to proceed to registration.

Whether you operate a business in the food and beverage industry, the tech space, trades or hospitality – if you intend registering a trade mark that for descriptive, functional or georgical terms – e.g.  words like ‘wines, takeaway, bakery, computers, IT services, software solutions, plumbing, construction, Western Suburbs, Sydney or Australia’, you should understand the barriers to registration before proceeding.

In summary, these elements are UNLIKELY to be registrable as a trade mark:

• Generic descriptors
• Functional terms
• Geographic add-ons

Rather, focus on the distinctive brand element is best in terms of brand protection and trade mark registration. Expert advice from a trade mark specialist upfront can save you considerable time, money and effort and will help you secure optimum brand protection that is tailor-made for your business objectives.

Mark My Words can help

Contact our friendly team if you’d like affordable advice or support on strong trade mark planning. Our trade marks attorney, Jacqui Pryor, has decades of experience assisting small and large businesses across the spectrum of industry, including fashion, and we can help you to optimally set up and manage your valuable IP assets.