A Big Pink Sky welcome to our latest team member Cathryn Warburton.
The most common and costly intellectual property trap that most small businesses are still falling into
74.6% of businesses with zero to 4 employees have “no intellectual property protection”, According to the Australian Bureau of Statistics.
The most common and costly intellectual property mistake is not having your business or brand name registered as a trade mark
- Business Names
Most Australian businesses have their business names registered. If yours doesn’t, then I recommend that you read no further. Instead, Google how to register an Australian business name and come back to this blog later!
Now that you have your business name registered, the most important point to note is that you need to take one further step before you own the right to use that business name as a trademark. Yes, I am talking about trademark registration.
Having a company name or a business name registered is insufficient.
- Competitors can steal your unregistered business name!
If you do not have your business name or brand protected by a trademark registration, a competitor could steal it and stop you from using your own registered business name, even if you register the business name before they registered their trademark. of my work comes from business owners coming to me once they have received a letter of demand stating that they are infringing somebody else’s trademark. Sometimes this is purely coincidental that both businesses have selected the same or similar names. Sometimes it is not. A client of mine who is a
Much of my work comes from business owners coming to me once they have received a letter of demand stating that they are infringing somebody else’s trademark. Sometimes this is purely coincidental that both businesses have selected the same or similar names. Sometimes it is not. A client of mine who is a tradie offered someone a job online. That person then registered my client’s business name as a trade mark, and sent a cease and desist letter, requiring my client to stop using the imposter’s newly registered trade mark!
In that type of situation, most businesses choose to re-brand (which usually costs from $4 000 to $20 000). The other option for them is to remove the other person’s registered trade mark by going to court. The cost of that is generally over $100,000 and therefore out of the reach of most small businesses.
- You could be infringing a registered trade mark without even knowing it
Another thing to be aware of is that ASIC will grant a business name registration even if it infringes an existing trademark registration.
Trademarks are usually granted to the first person to file the application. This means that getting in before your competition steals your name, all before somebody else comes up with the same name on their own, can save you thousands of dollars.
My lovely client, Moana, owner of B Styled For Life, has generously given me permission to share her story. She came up with the amazing slogan “Be The Star That You Are” and started to use it a little bit. She heard me talking about the importance of trademark registration at a networking event and asked me to help her secure rights to the name. A little bit of research revealed that somebody else had that slogan already registered as a trademark. This was a complete coincidence as Moana honestly believed that she was the first person to come up with that slogan. I then registered “Be Styled 4 Life” as a trade mark for her and she loves the security of knowing that she is not going to accidentally infringe somebody else’s trademark, and also that nobody can steal her incredible brand.
The only time you are 100% safe to use a business name or a brand name is if you have it registered yourself as a trademark.
- “But I did a trade mark search myself and it was all clear”
I recently had a client come to me who had conducted a trademark search before he registered his business name and start trading. Unfortunately, he did not realise that the trademarks that he discovered in his search that were for a different name to his, and different goods and services to his, were problematic to him.
The other thing that my gorgeous client did not take into account was that even if he had been right and nobody else had the trademark yet, delaying filing for the trademark meant that anybody could get it registered before he did.
It is important to know that not all names, logos or brands can be registered as trademarks. Watch out for Cathryn’s next blog on how to select a legally strong brand.
Cathryn Warburton is an internationally award-winning solicitor, patent attorney, author and speaker. She is The Legal Lioness with a passion for safeguarding her clients’ business and intellectual property interests. She founded Acacia Law when she realised that law firms run by old men were too inflexible to empower her to tailor her legal solution to each client’s needs. http://www.acacialaw.com
NZ & AU Patent Attorney (Partner)
QLD Solicitor (Director,Acacia Legal Pty Ltd)*
Tel: +61 7 3418 0974
Fax: +61 7 3014 8765