I’m A Trade Marks Attorney: Ask Me Anything

If you own a business or are thinking of starting something, you may find the following information on trade marks helpful.  We’ve sourced questions from Reddit and other social media and business platforms and we think they represent what many of you want to know. 

The world of intellectual property is complex and it can seem daunting.  Every situation is different and there is no ‘one-size-fits-all’ solution. 

Our advice has always been for business owners and entrepreneurs to get expert advice on their unique circumstances.  We know from experience that early intervention when it comes to protecting valuable IP ultimately saves time, angst and of course, money.

And now for some trade mark Qs and As…

The lawyer who helped register my business name as a trade mark keeps suggesting that I take action against another business that has a similar name.  But they’re much smaller than me and don’t even operate in the same state, so unless they start stepping on my toes, I don’t really mind.  What should I do?

Our advice would likely also be to take action.  Your silence could be construed as consent, and this may give the other business defence against a later infringement claim. Knowing an infringement is occurring but ‘sitting on your hands’ and not raising your concerns could also have adverse consequences if you did need to take action in the future, particularly on questions of costs, damages and similar. If you know they have been infringing and profiting and don’t seek a remedy ‘now’, why should you have access to those profits after potentially years of the other side trading? Whilst there may be some limitations as to time-frames for which you can claim infringement/damages and similar, it is generally best to act sooner rather than later.

This article on the basics of trade mark infringement may help you better understand your situation.

I’m about to set up an Pty Ltd company.  I’d like to know whether this needs to happen before I trade mark my business name and logo – and whether I should include Pty Ltd at the end of it?  Also, should I be registering a trade mark for the three initials of my company as well?

You don’t have to wait until your company is registered to register your trade mark.  An individual can own the asset and you can assign it to your company at a later date. Further, if you have been using the trade mark in the marketplace as a sole trader/individual, this typically dictates that the application should be filed in your name to begin with rather than the company’s, as you are the first legal user.  Generally, you don’t need to include the company structure (eg Pty Ltd) in your trade mark application.  This would mean your registration is for that full name, including Pty Ltd, whereas you may prefer to be able to promote the name without the Pty Ltd as a registered trade mark.

Another point to note is that it can at times be hard to register initials as trade marks. If you use a 3 initial version of your company name (separately to the full company name) then trade mark registration should be considered. However, if those 3 initials are not particularly distinctive, and, likely needed by others, the application could be rejected. A trade mark has to be distinctive and original so common initials (e.g. ABC) may not be considered sufficiently distinctive. 

I want to register a trade mark for my small business and am doing it myself.  Should I do Headstart or go the standard filing route?

Our answer will usually be determined by (a) the length of time you have run your business and (b) what any search results, prior to filling, revealed. With Headstart, IP Australia will assess your application within five business days.  This gives you a quick ‘heads up’ as to whether any issues are likely to be encountered. If not, you move forward with reasonable confidence the application will be approved and ultimately registered. If that initial check is not positive, it gives you a chance to swap to another trade mark that is more likely to be accepted (if it doesn’t look like moving forward with the first name/trade mark is viable). If you do get a negative Headstart result and choose to push forwards, another report issues in a month or so and will give you more time to then deal with those issues. The standard filing option usually takes 2-3 months for an application to be examined, after which you will receive notice if your mark is accepted, or will receive an examiner’s report giving you time to deal with any issues. With the standard filing option you will not have the option of similar amending to another name/trade mark in the event there are issues though.

Both options take a minimum of 7.5 months from the date of filing until trade mark registration (provided there are no issues).

Check out this article on the cheapest way to register a trade mark.

I’m starting a small apparel business and am pretty set on a brand name.  I’ve discovered that another company has already trade marked the same name, but it doesn’t look like they’ve used the word for a long while.  Plus they’re not even in the same niche as me.  I want to know whether I can just add another word to my name to avoid legal troubles?

We always recommend getting expert legal advice before doing anything – and especially before trading when you know someone else has already registered the same name!  It will be money well spent and could save you lots of dollars in the future, never mind all the hassle, time and stress.  

In short form though, you say they haven’t used the mark in a long while.  A registered trade mark must be actively used in the course of trading within a specific three-year period to avoid being removed – use it or lose it!  Depending on the timeline and the circumstances, the existing trade mark may be at risk of removal which could present an opportunity for you.

Sometimes adding another word will avoid the issue entirely, however, not always. For example, simply adding ‘Apparel’ or ‘Clothing’ would unlikely avoid the issue as those words simply describe the product involved. If there is risk of confusion between the names, giving regard to the scope of goods/services claimed by the earlier registration (rather than their niche in the marketplace) then the issue will be raised.

I’m starting to build my profile on TikTok and am keen to launch some branded merchandise.  Can I register a slogan as a trade mark?

Yes, it’s possible to trade mark a slogan, but it’s not always straightforward.  It has to meet the same criteria as any other type of trade mark. Namely – a trade mark has to be sufficiently distinctive and unique so that consumers associate the branded product with its original source.  It’s obviously not so easy to do this just with a slogan. A slogan such as (for example) “Australia’s best merchandise” would unlikely be registrable, as this is not distinctive; it is the sort of slogan others would likely desire to use without any improper motive.

I’m starting a business as a sole trader and the name I want is available from ASIC, but there are similar names registered with IP Australia in which both companies would share a part of the name. 

Both of us are operating in Class 44 of the Trademark Law and both of us operate in different states.  I don’t want to compete with them, although my business provides services which could be beneficial to those using the services of the other company (although that would be through a very different avenue which they don’t offer).

I don’t know what their motivation for trade mark registration was – maybe they intend expanding to other states or maybe it was to take advantage of internet searches – but I don’t want to waste money if my name is going to be legally questionable.  I can’t afford an IP lawyer.  Please help!

Multiple businesses can have the same trade mark if they sell unrelated products or provide unrelated services.  Their trade marks would be relevant for entirely different classes of goods and services.  For example, there would be nothing stopping Blue Cherry marketing from sharing the same trade mark as a garden services company because they would be operating in different markets.

However, as yours is linked to the same class of goods and services as the other company, this could be problematic (even if you go ahead and use the name without registering the trade mark).  Trade mark registration is, by default, a federal protection so the other party’s trade mark (unless they have specifically limited it to a particular state or territory) may be relevant. It is important to compare the services they claim in class 44 rather than focussing on the services they provide in the marketplace. If the claimed services overlap, this can be an issue.

Remember, a trade marks attorney doesn’t have to cost the earth.  There are affordable trade marks attorneys like our firm, who offer expert advice and guidance on trade mark matters at surprisingly low fees. This includes our free trade mark search, which would be able to identify overlaps on the register and offer preliminary options to avoid or possibly overcome those issues where viable.

Should I trade mark my business name and logo as soon as I begin marketing my business and acquiring users or would I still be protected on the legal side of things if I waited until the business gained more momentum?

We certainly suggest conducting trade mark searches, at least, before you begin marketing your business. This can at least provide some comfort that the name/logo is safe to use.

Discovering you’ve infringed on another brand’s rights (even unintentionally) can be extremely damaging to your business (and your wallet!).  

A registered trade mark is the simplest way to ensure legal protections for your brand, and, where viable, it’s best to get this done before you invest in building up your business. It does take awhile though – at least 7.5 months in Australia to register a trade mark – so not all businesses can wait that long. Do thorough research to find out if the same or similar name has already been registered (or applied for) as a trade mark (for similar goods and services) and think about where and how you will market your products or services and possible expansion plans. Then, when possible, file your trade mark application and considering using the Headstart system discussed above.

You’ll find this article helpful on why your business should register a trade mark.

I have applied for a trade mark through IP Australia. Nobody else is using this trade mark, there are only similar versions.  The similar versions do have some trade marks in the same class (Class 30), however they are for completely different items (their’s is pasta, mine is hot drinks).  Their trade mark isn’t the same and the item is totally different, yet my application said it will most likely be rejected because it’s too similar?  Who do I contact to get this fixed? IP Aus gives you 5 days to respond.

This indicates you have filed through Headstart and received an adverse assessment report, this suggests there is a product in your application (or in the earlier trade marks) that overlaps. Whilst the classes are relevant, the test is about the realistic likelihood of confusion between the marks. It seems unusual that a trade mark covering only pasta would be a problem for a trade mark for only hot drinks (such as tea or coffee in class 30) as these goods would not often be produced by the same trader/brand in order to cause confusion.

An IP lawyer or trade marks attorney is your best bet for a solution, or at the very least explanation. Alternatively, the examiner of your application (their name and number should be on your report).

I commissioned a business logo from a professional designer.  Can someone just steal it if I don’t have it trade marked?  If I have evidence of the commissioning, surely it is considered IP and protected by common law?

If only the world of IP was that simple! 

There’s a difference between copyright and trade marks.  Copyright arises automatically when a work is created (like a book, a work of art, a piece of music, a movie etc), whereas a registered trade mark is a form of legal protection for signs that are used in trade and commerce to distinguish one person’s goods or services from another (like a logo).

If you commissioned a logo from a designer, then – by default – the designer owns the copyright in any ‘artistic work’ involved. Often a graphic designer will confirm, in their t&cs, whether the ownership is transferred to the client or not (sometimes they will provide an exclusive license to the client instead). Copying an artistic work may infringe copyright, but a coincidentally similar logo may not. Registering the logo as a trade mark could help in situations where a competitor promotes a confusingly similar logo, even if it’s not a direct copy of yours. These days, also be mindful that if your logo is created on a third party ‘DIY’ logo creation website, their terms may prohibit trade mark registration, and, the image elements used may be available to everyone to use.

The best way of protecting your logo – presuming there are no prohibitions in your designer’s, or platforms, terms – from being used by another person in the course of business and to secure legal rights to its exclusive use is to register it with IP Australia as a trade mark.   

I’ve received some interest from parties on wanting to acquire a trademark that I currently own and could really use some guidance on how to navigate the negotiation and transfer process effectively.

You’re obviously well aware that a registered trade mark is a tradeable asset which can be sold or transferred to another party.  While the process is generally pretty straightforward, the first thing to establish is the value of your trade mark… and this article on trade marks and brand valuation may be helpful. It’s also important to consider whether your trade mark is at any risk of removal on non-use grounds, as this could affect value and also affect the way a negotiation is handled.

The transfer process itself is reasonably simple. When you sell or assign your pending or registered trade mark, you’ll need a ‘proof of title’ document, which is often a letter or deed of trade mark assignment.

You would then need to file that with IP Australia to record the assignment on their trade marks register.

My question is around objections – how could the owner of an existing TM know if a similar TM had been lodged?  How would a business know that a similar trade mark was under review and objectionable? 

There are various ways, but ultimately, it’s up to the trade mark owner to keep an eye out for potentially conflicting marks as IP Australia doesn’t notify trademark owners if a similar mark gets published for opposition, unless the applicant of the similar mark has successfully overcome the earlier right by way of filing evidence or other circumstances.

You’ll need to check the trade marks database or the Australian Official Journal of Trade Marks or use some kind of monitoring tool or watch service (Mark My Words Trade Mark Services offers this).  Once a mark is accepted and the acceptance is published in the journal, there’s a two-month window for filing an opposition.  

Say I have a unique slogan I want to trade mark…and I want to use it exclusively on apparel, such as a baseball cap. Is Class 25 the appropriate class?

When you apply for a trade mark, you need to list the goods and/or services you’ll use your trade mark for. It’s important to get this right because this determines what your trade mark protects.

So yes, Class 25 covers clothing, footwear and headgear (including baseball caps). 

Remember, once you submit your application, you can’t just add new goods and services if you change your mind or expand your product offering.  You’ll need to file a new application.  That’s why getting it right first time is so important!

I know every attorney is different, but what’s the typical price range to file a trade mark — just the name vs. name + logo? Curious what’s fair.

There are two ways of filing a trade mark application with IP Australia (Standard Application and Headstart).  If you take the DIY path it costs a minimum of $330 to register a trade mark in a single class of goods or services through Headstart.  Remember, the fees will vary depending on the number of classes you select and whether or not you make changes, delay things etc. Our firm’s fee is $975 for a single class headstart application, which includes the government fee, attorney fee and GST. Where a name and logo are required (i.e. being 2 separate applications) this is reduced to $775 per application.

You may also find this article helpful on how much is a trade marks attorney. 

More on Q&As about trade marks…

There’s no such thing as a silly question when it comes to trade marks, and we invite you to contact us if you’ve got a query or simply want a friendly, obligation-free chat.  As mentioned, each situation is unique and solutions have to be tailored to the individual circumstances – which is why this article is merely informative and doesn’t constitute legal advice.  

Our Mark My Words team has over 40 years’ combined experience in the field of trade mark law and registration, and while we’ve grown quite substantially over the past decade or so, we remain true to our founding goal of providing affordable, reliable and professional services to businesses of all shapes and sizes.  Check out our website for more information and have a read of our five-star reviews to make your own mind up!