How to choose a strong Trade Mark – Part 1.

Lady Business.
How to choose a strong trademark

There are so many things to consider when launching a new business, product or service. Choosing a trade mark (Business Name and Logo) can be a very exciting step and one many business owners jump straight into, but it is important to get it right from the outset.

As a registered Trade Marks Attorney with over 18 years experience, time and time again I see small business owners (and big companies) making the mistake of not thoroughly checking their chosen business name and logo at the new company’s infancy, only to find out too late that they are inadvertently infringing on a registered trade mark. This results not only in expensive legal fees but the added cost of re-branding, marketing and attributed loss of sales.

Here are a few tips to ensure you choose a strong trade mark:

1. Consider the relative strength of the mark.

A strong or distinctive mark is easier to register and to protect. You could put together a list of potential marks to compare them.

2. Choose a trade mark that is inherently distinctive or unique.

Try to avoid names that refer to a geographical location where the business is, or could be, carried out. For example, DUBBO IRONING SERVICE is not a distinctive trade mark because any number of IRONING services might wish to do business in Dubbo and legitimately use this trade mark. There are some situations where geographical names may form distinctive trade marks. For example, NORTH POLE for bananas is distinctive because banana producers would not conceivably need to use this trade mark.

3. Consider inventing a word.

Invented words are usually inherently distinctive so long as they do not directly describe the goods or services that they are used in connection with. For example, XEROX® for photocopiers is highly distinctive. However, ROHOE for an agricultural implement that functions as a rotary hoe was found to be lacking in inherent distinctiveness.

4. Avoid descriptive words.

Laudatory words that would normally be used to describe goods or services in exemplary terms usually lack inherent distinctiveness. For example, HIGH PERFORMANCE for cars, EXTRA FRESH for fruit and vegetables and HIGHLY CONFIDENTIAL for private investigation services are all lacking in inherent distinctiveness.

5. Avoid using your last name.

Surnames are not usually registrable unless they appear less than 750 times on the Australian electoral role. The name of a person, especially if it is a name that is considered common, is not usually registrable unless it is represented in some unusual manner.

Whether your new business venture is a hobby or a destined to be a big company, it is advisable to check your chosen business name and logo against those already registered with the Australian Government Intellectual Property agency, IP Australia or consult with a registered trade mark solicitor for advice.

To find out more about registering a trade mark for your business, contact Geraldine Rimmer at Michael Buck IP.

Lady Business.