Protecting Your Brand

Rita Khodeir
It is critical for businesses to ensure that they undertake due diligence before committing to a brand or new product or promotion.
 
Establishing a strong brand is crucial to business success. However, many small businesses overlook the fact that it is equally important to protect the integrity of their brands from infringement.
 
Picture this – you’ve just launched your own business, however, your excitement at the prospect of building it into a successful enterprise is dimmed when you learn that someone else is using the same trading name. Equally disastrously, you might find that the time and money you’ve invested into developing your brand in the marketplace is wasted as you are infringing on your main competitor’s brand.
 
Unfortunately, in the busy growth stage of establishing your business, it can be all too easy to overlook the importance of not only registering your business name but also registering any trade marks associated with the business. However, a little research and attention to vital details like this can go a long way in preventing disappointment, inconvenience and even loss of capital.
 
The difference between trade marks, business and company names can sometimes cause confusion, however, it’s important to understand the issues.
 
Registering a business name and company name does not give proprietary rights in the name. The registered trade mark holder holds the proprietary rights in the name.
 
For example, the registered trade mark owner has the exclusive rights to use the trade mark and authorise other persons to use the trade mark. Also, the registered trade mark owner has the right to commence proceedings and obtain relief for trade mark infringement.
 
The registered trade mark owner can sue a business or company name owner for trade mark infringement if the business or company name is the same as or similar to a registered trade mark and the name is being used in respect of same or similar goods or services covered by the trade mark registration.
 
Intellectual property
 
Your brand name is a form of intellectual property (IP). Increasingly, IP is regarded as one of the most valuable assets of a business. It’s therefore important to take steps to protect that asset, especially where you are contemplating selling your business.
 
So what exactly is IP?
 
Intellectual property is property that's a result of mental effort and original creative thinking and that has a commercial value. Inventions, artworks, designs, works of literature, logos, brands and creations are all examples of IP. The most common types of IP are patents, trade marks, copyright and designs.
 
In recent years, the laws protecting intellectual property have become increasingly complex so it’s a good idea to consult a lawyer if in doubt about any issue.
 
Top five tips to protect your brand
 
Observing the following simple steps will go a long way in helping to protect the integrity of your brand, particularly in its growth stage.
 
Dealing with infringement
 
All businesses should promptly deal with or respond to any allegations of Intellectual Property infringement – delay in doing so may affect the relief you are entitled to.
 
The following steps outline the process of dealing with infringement:
  1. Investigate the issue and keep copy of any enquiries. 
  2. Communicate send or respond to a letter of demand immediately. Consult your lawyer should you have any questions or concerns. The letter of demand should briefly set out the nature of your IP (eg registered trade mark; the alleged infringement, and the actions you require to address the infringement). Be careful, as it may be unlawful to threaten that infringement proceedings will be taken.
  3. Negotiate where possible a settlement of the dispute.
  4. Litigate - if there is no resolution, commence proceedings.

Registering your business name

Since 28 May 2012, the Australian Securities and Investments Commission (ASIC) has maintained the new National Business Names Register.
 
The new National Business Names Register does away with the old state-based system –your business will now be listed on an Australian-wide database.
 
If your business name was registered in a state or territory before 28 May 2012, you do not need to do anything until it is time to renew your business name.
 
Generally, you will need to register your business name if you carry on a business or trade within Australia and you are not trading under your own entity name.
 

For more information about the new National Business Names Register, download ASIC’s booklet, ASIC Connect: Making it easier to do business.

If you need advice please contact our experienced Intellectual Property Lawyer, Rita Khodeir.

Rita Khodeir, Trade Marks Attorney
Ph: (02) 9635 6422
Email: rkhodeir@colemangreig.com.au