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HomemibusinessTo Trade Mark or Not to Trade Mark: Is That the Question?

To Trade Mark or Not to Trade Mark: Is That the Question?

Whether yours is a multi-practice business or a small independent practice, your trade mark must be protected. After all, your practice name and the way you present it have all been designed to encourage awareness, capture repeat business and build loyalty.

Consider the risks of not protecting your trademark – if the optometrist down the road chooses to copy it, your customers could easily believe that practice is part of yours – and take their business there. Worse still, if your competitor uses your trade mark yet doesn’t back it up with the same high quality products and service you offer, they could permanently damage your image and reputation.

The Benefits

As your practice becomes more profitable, its associated goodwill will grow and so too will the value of your trade mark. This makes registering your trade mark an important step to take – especially if you are considering selling your business in the future, raising capital, or you intend to increase your ammunition against any competitor who tries to copy you to take your business away from you.

Additionally, as the owner of a registered trade mark you:

Consider the risks of not protecting your trademark – if the optometrist down the road chooses to copy it, your customers could easily believe that practice is part
of yours…

• Have the sole right (as against any newcomers into the market, at least) to use or permit others (such as your franchisees) to use your registered trade mark as a brand for the goods or services noted in the registration;

• Can see your trade mark as an item of personal property – sometimes trade marks are very valuable and businesses have been known to borrow money using them as security;

• Have a registration, which is normally Australia-wide;

• May provide the Australian Customs Service with a notice challenging the importation of goods that infringe your registered trade mark – useful if you find yourself competing with cheap copies of your branded products from overseas and

• Can be on a better footing to prevent others from using your registered trade mark as their brand on the same or similar goods or services – whether you simply need to quote a trade mark registration number to advise them of their transgression or take legal advice.

Use the ® Symbol

Registering your trademark is not as simple as choosing the practice name you like best and lodging an application. That’s because trade marks with an intrinsic connection to the goods or services you sell are difficult to register – so, for example, it’s difficult for an optometry practice to register the trade mark Better Eyecare unless it goes through the expense of proving extensive reputation in the trade mark. In other words, just as the brand name Westpac has nothing to do with banking, it’s advisable to choose a brand name for your practice that has nothing to do with optometry. Once you have done so, and your trade mark has been registered, you should always display the ® symbol next to it. That lets others know your trade mark is registered and assists in preserving the value of your intellectual property for yourself and your business.

If your trade mark is only registered overseas, you can employ the symbol, but you are required to note the country of registration near it.

The Risks of Not Registering

While you don’t have to register a trade mark to acquire some rights, registration is certainly the safer way forward. For a start, without a registered trade mark, you wont be able to inform the world, via the use of the ® symbol, of the ownership rights you have over your branding. Additionally, should a competitor steal your brand, image or slogan, you’ll find it both expensive and complicated to prove the infringement. (TM will provide you with some protection but again, it can be complicated and expensive if a legal argument ensues.)

DIY – or Appoint an Attorney?

The old saying ‘you don’t know what you don’t know’ is particularly pertinent when it comes to registering a trade mark. Yes, there is the cost of the services of a trade mark attorney, but if you think hiring a professional is expensive, wait until you’ve gone down the amateur route. Plenty of mistakes have been made by business owners who go it alone – here
are some of the traps you could fall into:

• You could be unaware of the consequences of applying for a trade mark in a specific colour or in black and white

• You may not be sure whether to go for a general broad description of goods/services or a detailed one

• You might assume that any negative responses you get from IP Australia’s Headstart program for DIYers is the end of the matter

• You may not appreciate how the law relating to trade mark registration interacts with other laws such as the Australian Consumer Law and the law of copyright

• You could make inaccurate assumptions about the correct class of goods & services

• You may not appreciate the financial and other implications of using one person or company as the applicant over another, or of having to change ownership later

• You are unlikely to be aware of all the prudent searches to do to make sure what you want to register is
legally available

• You might not be aware of proposed changes to trade mark registration procedure and how it could affect
your rights

• You may be unsure about when to apply for the words or for the logo to be registered.

Why Now?

Whatever you do, if you’ve got a strong brand, slogan or logo, you’re best to move quickly to protect it from your competition. After all, the first to apply will receive priority (subject to certain use rights which your trade mark attorney can tell you more about) – and you don’t want to miss out on all the advantages that registering your trade mark can deliver.

There are several steps in the process. Generally speaking the Trade Marks Office can take four to 16 weeks to let you know whether your trade mark has been accepted for registration or whether there are steps you can take to overcome any objection. Then there is at least another three months after any acceptance has been granted during which other parties are given a chance to oppose your proposed registration. If there is an ‘Opposition’ that will also extend the time.

In any event the earliest that a trade mark can be registered is seven and a half months after filing. However once registration is obtained it will remain in place for 10 years before it must be renewed.

Current fees are reasonable at AUD $120 – AUD$180 per class for each trade mark you apply to register (so application fees for two trade marks in two classes of goods and services would be (AUD$120 – AUD$180) x 2 x 2). Once the application has been accepted there is a further registration fee of AUD$250 per trade mark per class (so taking the above example the registration fees would be $250 x2 x 2). Then there is your Trade Mark Attorney’s fee and, while it’s advisable to shop around, the old adage ‘you get what you pay for’ applies in law as it does in medical fields like optometry.

Cara Ghassemian is the principal of CG Lawyers, which specialises in helping businesses safeguard their branding and in the securing of creativity profits for creative professionals and publishing houses. It has a particular niche in acting for those in the fine arts sector such as galleries, corporate art advisors and collectors. For more information on Trade Marks email Cara at [email protected] or go to: on www.cglawyers.com.au

The matters set out here are not intended to be a definitive analysis of legislation or professional advice. You should take legal advice before any course of action is pursued.