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3 Important Trade Mark Considerations

Descriptiveness

Though it might be tempting to opt for a descriptive name for your brand to assist consumers with brand recognition, choosing a name that is too descriptive often results in a brand that is not be capable of registration as trade mark.

Consider, for example, the brand name ‘Global Exports’ which is in the business of international logistics. While consumers are likely to associate Global Exports with the services of an international logistics business, the brand name is too descriptive for registration as a trade mark. That is because other traders in the field of international logistics may need to use the words ‘Global Exports’ in carrying on their business activities. In other words, ‘Global Exports’ is not a trade mark that is capable of distinguishing the goods or services of one trader from those of another.

There are exceptions to the above rule. For example, if your brand has been used to such an extent that it does in fact distinguish the designated goods or services of your business. However, in practice, this is often a difficult burden of proof to overcome, particularly in respect of very descriptive brand names.

Future proof your trade mark

Prior to registering your trade mark, you will need to consider which classes of goods or services are important for your brand. Remember, it is important to ‘future-proof’ your trade mark by considering which classes are relevant to your brand now, and in the future. There are 45 classes of goods or services that you can choose from, each representing different categories of goods or services. Often classes will have overlapping claims so it is important to make sure you get it right.

Consider, for example, a company that is in the business of manufacturing and selling a variety of ‘bags’. Depending on the types of bags they offer, it may be necessary to file under different classes:

Class 9: camera bags adapted to carry a camera; laptop bags; sports bags for helmets…

Class 15: bags adapted for musical instruments…

Class 18: airline travel bags; camping bags; cosmetic bags; gym bags; leather bags…

The above is an example of how different products are often associated with more than one class.

Use it or lose it

While registering for a trade mark is an essential step to securing your brand name, it is also important to remember that a registered trade mark can be removed from the trade marks register for non-use. Trade marks that are not used for a long period of time or not registered in good faith may be susceptible to a non-use application. The result of a successful non-use application will mean that your trade mark is no longer registered in the classes of goods or services in respect of which the non-use application was made.

The above is also important to consider in the event that the goods or services that your business deals with changes over time. In that regard, you should ensure that the classes associated with your registered trade mark reflect the goods or services being offered by your business as it evolves. For example, if your trade mark is for hair products and your business grows and establishes a chain of hair salons, you will need to register for an additional class of services. This is also why it is crucial to ‘future proof’ your brand and ensure that your trade mark covers the goods or services which are important to your business’s growth.

Take-away points

  • Trade mark protection is important for securing your brand against other traders;
  • Trade marks only protect the goods or services in respect of which the trade mark is registered. Think carefully about what classes are necessary for your brand;
  • Use it or lose it. Make sure your trade mark does not become susceptible to a non-use application.

    If you would like to know more about this article or copyright protection, please do not hesitate to get in contact with the team at W3IP Law on 1300 776 614 or 0451 951 528.

    Sam Gilbert, IP and Technology Consultant, B.A., LL.B  University of Technology, Sydney
    Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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