TRADE MARK PROTECTION: WHAT SHOULD I PROTECT?

A trade mark is a “sign” used, to distinguish the goods or services dealt with or provided in the course of trade by a person from those dealt with or provided by another person. A sign can include a letter, word, name, signature, slogan, numeral, device, brand, aspect of packaging, shape, colour, sound or scent, or any combination of these.

When developing a new brand, brand owners will often ask whether they should protect their brand as a word trade mark or as a logo. The short answer is both. If costs are an issue, priority should be given to protecting the brand as a word trade mark.

Rights given by registration of a trade mark

Registering a trade mark provides brand owners with the exclusive rights to use, license or sell the trade mark in respect of the goods and services for which registration has been sought. In doing so, other traders are prevented from using a mark that is identical or “deceptively similar” to the registered mark. In this way, a trade mark protects brand identity and secures a company’s valuable rights to its image. Owning a trade mark registration can also reduce legal costs in an infringement or enforcement action.

Benefits of securing a registration for a word trade mark

A registered word trade mark gives brand owners broad protection against potential infringement by others using a trade mark that is identical or ‘deceptively similar’. This is because a registered word trade mark covers all variations of the words, no matter the form. For example, a registration for ABC123 covers use of the mark in any colour, size, shape or font. In contrast, a registration for a logo covers the exact representation of the trade mark featured in the registration. This may in some cases make enforcement difficult.

A word trade mark also provides greater flexibility for brand owners. For example, a brand owner may wish to give their brand a facelift with a new logo (think of BP, eBay or Apple). Having the underlying brand name registered as a word trade mark ensures the core brand remains protected, regardless of any graphical or stylistic changes to the mark. For example, the placement of an image or the chosen font or colour.

A logo will often have some protection as an artistic work under the Copyright Act 1968 (Cth). While this protection is different (and not as broad) as trade mark protection, it will usually suffice to guard against a blatant copy of a logo.

Generally speaking, words are more important to protect and register as a trade mark than a logo. Ideally, they should both be protected as individual elements. Of course, every case is different, so it is important to determine what is best and can be achieved for your brand.

How can DC Strategy help?

DC Strategy has extensive experience in registering, protecting and enforcing trade marks in Australia and overseas. Our specialist trade mark lawyers offer a comprehensive range of trade mark services including:

  • providing strategic advice on brand creation and trade mark registration requirements in Australia and overseas;
  • filing trade mark applications in Australia and overseas, including via the Madrid Protocol;
  • prosecution of trade mark applications before the Australian Trade Marks Office;
  • defending actions for trade mark non-use cancellation proceedings; and
  • acting in opposition proceedings.

If you have any questions about your trade mark portfolio or wish to secure trade mark protection for one of your most valuable assets, please contact one of our specialist trade mark lawyers.