One of the serious consequences if you’ve not registered the trade mark and someone else comes along, is they can stop you using it, AND they can demand that you account for any profits you’ve made out of using that trade mark.

Harvey Bowlt

Synergy48 Commercial Law Specialist, Bowlt Commercial Lawyers

Synergy48 Business Advisor Harvey Bowlt from Bowlt Commercial Lawyers explains:

  • What are trade marks?
  • Why is it important for us to register them?
  • What is the registration process?
  • What other forms of Intellectual Property should we be aware of?
Read the summary

What are trade marks?

A trade mark’s basically a word or phrase, a letter, a number, movement or a sound or a number of other types of logos that are used to distinguish goods and services of one trader from another. The beauty of that is that, that registered trade mark gives you the right to use or licence or sell those registered goods and services throughout Australia. it distinguishes you in the market place. but they can obviously be a very valuable asset in a business.

The most common mistake that people make is if they think if they have a business or a company name registered then they have IP protection

Why is it important for us to register them?

  • The beauty of registering the trade mark is that you have a much more streamlined process in relation to infringement claims and stopping people basically trading off your name
  • They can protect you against other companies using your brand
  • They can even be used to authorise customs to prevent products using your brand from entering the country
  • if you’ve not registered the trade mark and someone else comes along, they can stop you using it and they can demand that you account for any profits you’ve made out of using that trade mark,

What other forms of IP should we be aware of?

  • Copyright relates to generally what is known as artistic work. Things like books, movie scripts, and that type of thing
  • Then there’re things like patents, which relate to novel inventions
  • You can have a product having a combination of different types of IP. For example, a new game that you might have developed. Where you would have the name, which would be subject to a trade mark. The actual rules of the game might be copyrighted. The design of the board may be subject to copyright as well. There could be various different types of intellectual property involved in that one specific product

 

What are the steps in trade marking

  • identify what valuable brands or products you have in your business.
  • See how best you’re going to register that trade mark
  • Find out what other potential competitors are out there or other businesses out there, do your due diligence on them
  • Decide which categories you want to register – what areas you want protection in
  • Go through the initial application process with IP Australia
  • Make any amendments needed
  • Lodge a full application with IP Australia
  • Once you’re past IP Australia, they then advertise it in their journal,
  • If it isn’t opposed at that stage then as soon as the 7 and half months period is up, IP Australia will register it for you
  • Following registration
    • It’s important to draw up an IP register, and that’s not only for trade marks. That could relate to other IP you have with full details and renewal dates, because a trade mark is registered for 10 years and then you actually have to renew it every 10 years.
    • have someone in your business to keep that register up to date and regularly monitor possible infringement.
Read the full transcript

Annemarie:        I’m your host Annemarie Cross. Joining me on today’s show is Harvey Bowlt. Harvey is from Bowlt Commercial Lawyers and is an accredited specialist in business law and one of only 107 acquainted by the Law Institute of Victoria. He is a well rounded and experienced lawyer with over 30 years experience in both South Africa and Australia. Harvey specialises in helping businesses manage risk, which includes advising clients about the necessity for registering trade marks to protect and add value to their business and of course their brand.

Now on today’s show, Harvey is going to speak about the best practise benchmarks around trade marks and protecting your brand, in particular the value of trade marks to your business and the dangers in not registering them. What trade marks are and how they differ from business and company names, and other types of intellectual property as well as the basic trade mark application process. So, welcome to the show Harvey.

Harvey:                Morning Annemarie. How are you?

Annemarie:        I’m really good. This is an area that I believe many business owners don’t recognise the real value of a trade mark and therefore leave themselves wide open and as you say, dangers in not registering them. Right from the top. Let’s talk about what is a trade mark so that we’re all on the same page. We know exactly what a trade mark is and share some of the reasons why they’re so important for us to register them.

Harvey:                Yes Annmarie. Just from a technical point of view, a trade mark’s basically a word or phrase, a letter, a number, movement or a sound or a number of other types of logos that are used to distinguish goods and services of one trader from another. The beauty of that is that, that registered trade mark gives you the right to use or licence or sell those registered goods and services throughout Australia.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                What it does is it distinguishes you in the market place. You can imagine talking about why they’re so important and the value of them is that … Take for example at the high end of time, take Nike or Coca Cola or Google, can you imagine what those trade marks would-

Annemarie:        Yes.

Harvey:                For example, I can actually tell you Google was valued at about 44 billion US dollars some years ago and that was just the trade mark. Yes, obviously smaller businesses the trade marks aren’t that valuable but they can obviously be a very valuable asset in a business.

Annemarie:        I can imagine, and we’re going to talk in a moment about some of the typical mistakes. We make as business owners, we’re busy in our work and in our clients and obviously always look at new business opportunities. We can often put things on the back bend or I’ll get you at later or that’s not really important for us but unfortunately, that can end up … particularly if you spend a lot of time and energy in building a really solid brand you’ve got this trade mark that all of a sudden, hang on, you’re not allowed to use it anymore. Let’s talk about, what are some of the typical mistakes that you see businesses making and what are some of the negative ways that it impacts their business.

Harvey:                We’ve already touched on one of them. Perhaps the most common mistake that I’ve come across is that people had to develop that valuable brand or product and they may have been doing that for some years or perhaps just rebranded their business.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                But they haven’t registered the trade mark. So that’s the first thing, and they have what’s known as an unregistered trade mark. You can try and protect that but it’s really messy, lengthy and time consuming exercise, and the outcome is not always certain. The beauty of registering the trade mark is that you have a much more streamlined process in relation to infringement claims and stopping people basically trading off your name.

Annemarie:        I can imagine, if someone comes to you and says, hang on a minute you’re using that phrase or that particular image right, as you said, it’s a movement or sound, you can’t use that anymore. If you’ve based your whole marketing campaign, a whole brand or product, services around that particular trade mark what you thought was protected, it can be incredibly expensive to have to change and pull everything out off the market so to speak.

Harvey:                Yes. I can give you a couple of examples. I’ve actually had someone recently whose rebranded his business but unfortunately didn’t do the due diligence beforehand and came to see me to get some advice on other things and I started talking about the trade mark and found that there’s a rather large company with deep pockets out there who’s probably going to be coming after them very soon. That was the bad news because they’re not going to sit back and allow their brand to be infringed by my client. Fortunately, that is not as bad as it might be, and I suspect that it won’t cost my client too much to rebrand, but you can imagine if they’d been trading for 15 or 20 years and they had a really valuable brand that was out there in the market place that they hadn’t protected. That’s why it’s so important to register it.

Annemarie:        As you said, that is something that often will happen. What are some other mistakes? It really is assumptions that as business owners we’re telling ourselves, but in reality we need to stop and really consider by not registering this trade mark how we’re leaving ourselves wide open. What are some of the other mistakes we need to be aware of?

Harvey:                The other mistake that people make is if they have a business or a company name registered then they have that IP protection. That’s not the case. A business name is just applied to, so that someone can search and find out who’s actually behind the business. It gives you very little, if any, IP protection. That’s first misconception that people need to get out and make sure that they’re not relying on the business name or the company name.

I’ve already touched on people starting up or rebranding their business and then finding that someone else has a similar trade mark. The serious consequences of that is that if you’ve not registered the trade mark and someone else comes along, they can stop you using it, they can demand that you account for any profits you’ve made out of using that trade mark, and you can imagine that could cost you thousands of dollars. Could I give you an example of a situation?

Annemarie:        Absolutely. Mm-hmm (affirmative)-

Harvey:                I had a situation some years back where a client came in to see me. They had fortunately registered a trade mark. They produced these 2 goods, their goods and goods that were packaged exactly the same that had come in from overseas. Unfortunately, the other goods were cheap quality and they were inferior quality and they were being sold for about a third less. You can imagine how this was damaging their brand in the market place.

Annemarie:        Yes.

Harvey:                What we did was of course … because we had the trade mark registered, we were able to call upon them to stop selling the goods, and it involved tens of thousands of items, which had to be removed from the shelves. Fortunately, the other party realised that they were wrong and backed off quickly. But you can imagine the brand fight in court if parties get involved in fighting over things like this.

Annemarie:        Yes.

Harvey:                The other beauty of registering a trade mark of course is that you can actually get hold of customs and say look, these goods are coming in from overseas and you can actually prevent people from … they can actually be stopped by customs and prevented from coming into the country. That’s another advantage of having the trade mark registered.

Annemarie:        As you said with the client example that you just shared, because they took all of the right steps and in a moment, you’re going to talk us through what are some of those steps involved now that this other brand that was entering the market that was potentially going to damage their brand, they could approach them and say, you need to remove all of that. There was tens of thousands of dollars in quote and all of that hassle, which could sometimes send businesses out of business. They did the right thing. Let’s talk a little bit about that. You’re already mentioned what a trade mark is so it can be as we said a word, a phrase, a movement or a sound. You’ve talked a little bit about the fact that unfortunately there’s a misconception that just from registering a business name or a company name, your IP is protected. You will also speak about other areas or other types if you will, of intellectual property. Do you just want to share briefly, what are those other types of intellectual property?

Harvey:                The classic ones involve things like copyright. Copyright is not registered officially as you would use a trade mark. Copyright relates to generally what is known as artistic work. Things like books, movie scripts, and that type of thing.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                You would have seen people asserting their copyright in the front of a book for example, where the little ‘c’ in a circle, which shows that, you’re telling the world at large that I’m asserting my copyright in that. You don’t have to do that because it’s already subject to copyright if it’s an original artistic work for example that you’ve produced.

Then there’re things like patents, which are very complex then relate to novel inventions. It’s a very specialised field. I don’t deal with that. There’re a number of large patent attorneys around in Australia. But there will be 4 or 5 highly specialised firms who specialise in patents. It’s a very highly specialised field. Those are the obvious ones that comes to mind. But there are others such as plant breeder’s rights and designs. For example, a design might be a specific design in relation to a product that you have produced. You can have a product having a combination of different types of IP. For example, a new game that you might have developed. Where you would have the name, which would be subject to a trade mark. The actual rules of the game might be copyrighted. The design of the board may be subject to copyright as well. There could be various different types of intellectual property involved in that one specific product.

Annemarie:        Yes.

Harvey:                You would have heard me mention brands and products. For example, a company might want to trade mark its brand and Coca Cola for example might be a classic there. There may be a whole lot of other products that it produces and those products would probably each need protection as well.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                You could end up with some number of trade marks for a whole lot of different products.

Annemarie:        Yes. Thank you for explaining that because as you mentioned with writing and a lot of people do write, blog posts, articles and as you said books too, and typically, they’ll put the ‘c’ there and then that’s as you said protected under copyright. Some people may assume that since I’m using this phrase or since I’m using this thing, this design or word or phrase, as you said movement or sound, that we’re using it just as a part of our business and our day-to-day operations, they may assume that just like copyrighted material written word, that it is protected. But what you’ve just said to us, that no, we really need to register our trade marks because we don’t want to find ourselves down the track having built this great brand, having this great trade mark and then having to pull it off the shelves.

Thank you for sharing that because again that could be a misconception that we covered under the standard copyright as well. Let’s talk about then, some of the best practise benchmarks when it comes to trade mark application, the process. Things that we need to know so that when we do want to then approach and get a trade mark registered, that we know the right steps. Of course, we’re going to share with everybody Harvey, at the end of today’s interview, how they can get in contact with you because sometimes there are questions that come up and certainly checking in and getting the support of someone such as yourself who is an expert in this can certainly benefit our business.

What are some of the steps we need to be aware of?

Harvey:                Sure. Perhaps I can deal with the actual process at the end, but just keeping in mind the benchmarks that I would … when you’re doing a risk assessment if I can it that over IP, the first thing I think obviously I think you need to do is identify what valuable brands or products you have in your business.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                Then you can obviously sit down and speak to someone such as myself to see how best you’re going to register that trade mark. It’s important to get that advice because people will assume that they … let’s take simple example. If you’re calling yourself Fred’s Flowers. There’s no much distinctiveness in that. Fred is a common name. Flowers is very generic word. You’re not going to be able to trade mark that easily. If you were to put a logo with it, then that would probably give it the distinctiveness that you require to be able to trade mark. Those are the kind of things you need to be aware of.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                Once you’ve identified your valuable brands or products or how you’d like to perhaps represent them, then searches need to be done via IP Australia, business company name searches, domain name searches. All range of other searches through Google, LinkedIn and other social media to see whether there are any other businesses out there using similar names because they are your potential competitors or of course may have already registered trade marks, which you would clash with. That’s the second step. Once you can do the searches yourself but generally people don’t know quite where to look, so you would normally need someone such as myself to help you with those.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                The third step as I said, once you’ve found out what other potential competitors are out there or other businesses out there, do some due diligence on them. I work with for example, business consultants who often will approach me and say Harvey, I’ve actually done the due diligence and this company is a one man show trading in Darwin and my client want’s to trade mark and we then do the due diligence and find out that they’re not really a competitor to your clients so that you’re probably going to be able to register the trade mark without much difficulty. It’s at that stage that you will also as I said, will decide whether you need to tweak your trade mark so that it is more distinctive and more likely to be acceptable to try IP Australia for registration purpose.

Annemarie:        The reason for that, if I can jump in, is because there’s different categories that you can register your trade mark in. Is that correct?

Harvey:                Yes.

Annemarie:        Yes.

Harvey:                There are 45 different categories of goods and services, so when you register them you will look at what are your most specific … what areas you want protection in. You will register in one or more of those categories. Typically, in my experience, people register in between 1 and 3 different categories. There are 34 clusters of goods and there’re 11 clusters of services. You will describe how you want your trade mark described within those different categories. That’s how it works because of those different classes.

Annemarie:        Yes. Great.

Harvey:                If I can [inaudible 00:15:10] would like me to just deal with very basically with the process itself?

Annemarie:        You mentioned that we need to really identify the valuable assets. Things like brands, products, and things like that.

Harvey:                Yes.

Annemarie:        Then we need to search do due diligence. Are there any other steps that you recommend that we do or those really cover what needs to be done and then you went and walked through the basic application process.

Harvey:                Yes.

Annemarie:        Are there any other key points that you want to mention around benchmark?

Harvey:                Once you’ve registered the trade mark, the important thing then is to make sure that you’re protecting it. Once you’ve gone through the process, and we’ll discuss that shortly.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                It’s important to draw up an IP register, and that’s not only for trade marks. That could relate to other IP you have with full details and renewal dates, because a trade mark is registered for 10 years and then you actually have to renew it every 10 years.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                It’s important to draw up that register. Once you’ve done that, you need to have someone in your business to keep that register up to date and regularly monitor possible infringement. Big companies have whole teams of people who troll through IP registers throughout the world to see whether their IP has been infringed. I’ve had situations where I’ve had clients who have been approached by foreign companies who said you’re breaching our trade mark and we’ve had to deal with that. The important thing there is to have someone within your business, even a small business, even if it’s a one person business, they need to be aware that every now and then they should be checking simply the IP Australia website and doing searches to see whether someone might be out there trying to infringe their trade mark.

Annemarie:        Yes.

Harvey:                And maybe do something about it. Assess, register and then monitor. Really I suppose very simply put is how you would … the benchmarks to keep in mind there.

Annemarie:        Yes.

Harvey:                The process itself is quite long and not necessarily heavily complicated, but it takes a minimum of 7 and a half months because Australia has to comply with certain international treaty obligations. What I do is, there’s a very basic initial application called the TM head start application, which enables you to … you lodge the application and IP Australia come back to you within 5 business days to say whether it’s a provisional … they’re provisionally happy with it or not. The beauty of that is that if IP Australia isn’t happy and they’ll give you the reasons.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                You can then either amend it, if I can give you an example, I had a trade mark a few years ago where it comprised of 3 words. IP Australia came back with what I thought was a somewhat different trade mark but I wasn’t going to argue with them because it’s easier to try and find a way around these situations. All we did is we built a little castle around the words. That then satisfied themselves that it was sufficiently distinctive from the other trade marks. We were able to then convert that to a full application and it went through. Either they’ll give you a provisional yes. In which case you immediately convert it to a full application and that’s when the clock … the 7 and half months clock starts ticking. Or you can amend it or in worst case scenario, you can withdraw altogether. I’ve only had to do that once, and your client hasn’t run up into a lot of money with a trade mark that’s not going to fly with IP Australia or infringe in someone else’s trade mark.

Once you’re past IP Australia, about 5 months later they then advertise it in their journal, and that’s when third parties can come along and say we don’t agree with it being registered for some reason or other. In other words they may have a similar trade mark and they’re saying that it’s a potential infringement. If it isn’t opposed at that stage then as soon as the 7 and half months period is up, IP Australia will just register it for you. As I said, time wise it takes a while but it doesn’t necessarily need to be overly complicated. I generally have a fairly good idea because I’ve done the research and I’ve done the background searches and normally I have a fairly good idea of whether it’s likely to be okay with IP Australia. Of course nothing is certain and I’ve had … there are instances where IP Australia’s come up with some rather obscure objection, which I’ve had to deal with.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                But once you’ve got past IP Australia, the second part of the process are the advertisement for objections by third parties.

There’re only about between 3 and 5 percent of trade marks are opposed at that stage. So if you get past IP Australia, you’re generally 95% there. It’s at that stage that the people normally say to me, can I start using the trade mark, and I say well look, if it’s got past IP Australia, it’s a very calculated risk to actually go ahead and start trading with it. I’ve had some clients who have because there’s always the possibility that someone will oppose it, but it’s a fairly small possibility. That’s where you’ll see often people will put the words TM after their trade mark, which is basically saying, look it’s in the application process.

Annemarie:        Yes.

Harvey:                But it hasn’t been registered yet. The difference between little TM afterwards and the R in the circle, is that the R in the circle means that it’s been registered.

Annemarie:        Yes. That makes sense, that’s right. I recall seeing TM, and that’s the difference, yes.

Harvey:                Yes. In fact, it’s an offence in Australia to put the R in a circle after your trade mark if it hasn’t actually been registered.

Annemarie:        [crosstalk 00:21:13] there you go.

Harvey:                That very basically is the process itself. As I said, I’ve had a few situations where it’s been opposed by IP Australia at the TM head start stage and we’ve managed to get around them.

Annemarie:        Mm-hmm (affirmative)-

Harvey:                IP Australia are a very professional bunch of people up there and a pleasure to deal with. Of course, they come out with the usual response that you get from government departments that you can’t give legal advice, but you ask them the right questions, they’ll normally give you some code to say, yes, it sounds like it’s okay. I find them very helpful, and they’re very professional.

It’s a nice area of law to deal with because they’re very well trained people.

Annemarie:        Yes. Well, thank you so much Harvey for explaining that. I know that often in the profession of law and conventional law and so forth, when you hear people explain it or other lawyers explain it you can look at them and your eyes close over. I think how you explained it today made absolute sense. We know the absolute reason why … the benefit of why we really do need to reach out to someone of yourself who’s an expert in that area to support us, because yes, we’re spending a lot of our time and resources to build our brand, which are so important if we want to stand out in the crowded market place. Brand value such as Google, how much is Google’s brand worth or trade mark-

Harvey:                Back in 2011 it was worth 44 billion US dollars. That was the estimate.

Annemarie:        Yes.

Harvey:                At the time, that was 27% of its actual value of the whole company. That’s obviously an extreme example, but there are any number of valuable trade marks out there and I’ve dealt with a few where I’ve pointed out to my clients that look, you’ve been trading for a long time now and you’ve really got valuable unregistered trade mark.

Annemarie:        Yes.

Harvey:                It’s particularly important in a highly traded market, so for example, in an industry that’s very highly traded. If you’re an underwater pool cleaner then it’s probably not as important as if you’re an estate agent, perhaps, which is a highly traded market. Keep that in mind, if you’re in one of those industries, which is very highly traded and very competitive, it’s even more important to make sure you’ve got your trade mark registered.

The other advantage of a trade mark is it’s not and overly expensive exercise to register one. Patents for example, can be expensive. It’s not and overly expensive exercise to register your trade mark. It’s very important to protect our brand.

Annemarie:        Absolutely. Of course if someone’s not too sure, what we’re going to do is to share in a moment on, Harvey how I can get in contact with you to have a conversation and then obviously you will be able to advise them. I’m sure that the information that you will be able to share with them will just really re-emphasize that hey, if you’ve been trading for a while, there’s nothing stopping you if it’s not registered for someone else who is in your industry to think, I love it. It’s not registered. Well, here we go. Here’s an opportunity and we do not ever want to find ourselves in that situation.

Harvey just share with me, how can I get in contact with you and what’s the best way?

Harvey:                People can contact me either via my website, which is www.bowltlawyers.com.au or by email on harvey@bowltlawyers.com.au. There’s a lot of information available on my website as well.

Annemarie:        Fantastic. Thanks once again for coming on the show Harvey.

Harvey:                It’s a pleasure. Thanks for having me.

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