Trade Marks, Part I: Busting the myths.

1. Trade mark protection is expensive

It doesn’t have to be - the official filing costs for national trade mark applications are usually in the region of 200-300 USD and there are cost effective options if you’re considering international protection. It’s all about getting your strategy right given your company’s budget, activity, and plans for growth.

2. Applying for a trade mark is easy

The online application for a trade mark is relatively straight forward. It’s the due diligence and strategic planning before the application that adds complexity. At a high level, this includes: 

• Ensuring your trade mark is capable of registration - some phrases, words and images are a non-starter.

• Searching for existing third-party trade marks so that you are fully aware of potential problems and/or limitations with your trade mark before fully committing.

• Identifying which of the 45 classes of goods and services are relevant to your application - getting this wrong may compromise your level of protection.

• Deciding on how your trade mark is represented, assessing the pros and cons of options such as colour, black and white, and consolidation.

• Ensuring your filing strategy is both cost effective and compatible with your company’s growth strategy, and that you understand any regional nuances when it comes to trade mark rules and systems.

3. Trade marks are not important for smaller businesses

Trademarks are important for businesses of any size, as they help to protect the brand identity and reputation of the business and help deter potential infringers. Without a trade mark, a business risks losing its unique identity to competitors and/or being blocked from certain markets.

4. Trade marks last forever

In general, trade marks are granted for a period of 10 years with the right to renew. If you fail to renew or “use” your trade mark your protection may be lost altogether. “Use” will be discussed in a subsequent article.

5. Everything is capable of trade mark protection

There is a plethora of restrictions when it comes to trade mark protection. At a high level, make sure that your mark: (i) isn’t generic; (ii) doesn’t describe the characteristics of the goods/services to which it relates; (iii) isn’t identical or similar to other trade marks; and (iv) doesn’t include any national flags or emblems.

6. An unregistered trade mark is just as good as a registered trade mark

Unregistered trade marks should be the last line of defence rather than the “smoking gun”. With a registered trade mark, all you need to prove is infringement. With an unregistered trade mark, you will need to prove goodwill in your trade mark, misrepresentation (in the mind of the public), and loss as a result. None of which is straightforward!

Top Tip: Start thinking about trade marks and instruct an IP professional to help maximise protection, minimise costs and future proof your brand.

Disclaimer: Re-think Legal is a boutique legal consultancy providing businesses with legal support. The information contained in this blog is simplified and must not be taken as a definitive statement of either the law or practice of any given jurisdiction and does not constitute legal advice.