Do you have a logo? A business or product name?
Do you have a corporate colour scheme or visual identity that is intrinsically linked to your goods or services?
For most small businesses, the answer is yes. Ask them if they’ve registered their trademarks or brand, however, and most will respond with a resounding ‘no’ or ‘why would I need that?’
In fact, there are a multitude of reasons to register a trademark – to find out more we spoke to Trademarking Specialist and #1 Amazon Best Selling Author, Suzanne Harrington from Pinnacle TMS.
Suzanne emphasises it all comes come down to protecting your brand, which is an important business asset. If you don’t own your brand, you’re vulnerable to anyone who decides to jump in and use your name or register your marks before you do. They may be competitors, international companies entering your market, companies in a market you want to enter, trademark squatters, or even licensees of your technology or brand.
Registering a trademark is something every small business should consider, no matter what stage of development they’re at. In fact, Suzanne highly recommends the sooner the better, so you don’t invest too much time, money and energy on a brand name that may not be available.
Trademarking: the basics
IP Australia, the government body responsible for trademark registrations in Australia, defines trademarks as ‘a way of identifying a unique product or service … a trade mark can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or any combination of these.’
For most businesses, trademarking any names and logos is a good place to start. As well as preventing other people from using your registered identity and profiting from your brand, a registered trademark will also protect you against larger, more litigious companies who may see a similarity between your corporate identity and theirs.
Suzanne cites the creation of the “UGG” brand as a high-profile example in Australia. During the 2000s, a complicated trademark dispute over use of the term “ugg” occurred when US company Deckers registered the trademarks for “UGG” in the US and many other countries. Multiple Australian small-scale manufacturers were already using the term generically and ultimately won the right to continue doing so in Australia and New Zealand only. Nonetheless, the fact they had to fight hard to retain this right highlights the power of trademarking and the vulnerability of small businesses who are unprepared (Brandchannel).
When registering a company name or logo, the more unique and non-descriptive (of a generic product or service) the name, the better the chance of securing the trademark registration, says Suzanne. With registration granted for 10 years, the cost at a couple of hundred dollars per year is significantly less expensive than being sued or having to rebrand.
When should you trademark?
If you’re in the early stages of developing or running a business, registering a trademark can seem premature. But getting your affairs in order early on might be one of the smartest things you can do – even Jim Penman, of Jim’s Mowing fame and founder of the Jim’s Group home services franchise, started off as one man with a lawnmower in 1982 (BRW).
Even if you’re starting small, it pays to think about where you want to be in 10 years’ time and to take appropriate steps to protect your future business assets – which includes your brand.
Think about your business objectives, such as where you see the company going, whether you envisage any international expansion, licensing of technology or brand identity, or whether there are any risks to the business that might arise in future as a result of not registering your trademark early enough.
Suzanne emphasises that if you are licensing your brand, it is particularly important to trademark it in all regions it is being used – both your own and any countries you are licensing it into. If you license your brand without owning the trademarks, your licensee is at liberty to register it instead.
No trademark? What could go wrong?
Surprisingly, Apple is a prime example of the problems that companies face if they don’t plan their international activities far enough in advance. When it came to trademarking the iPad name, they discovered that company in China known as Proview China had already registered IPAD in 2001, and had been using it as far back as 1998, long before the iPad was even a gleam in Steve Jobs’s eye. The ensuing altercation resulted in a settlement that cost Apple some $60 million (ABC).
Indeed, Suzanne says when it comes to China in particular, it pays to register your trademarks sooner rather than later. Many companies with big brands have experienced difficulties registering their trademarks, owing to a culture of trademark squatting and a savvy counterfeiting trade. There are many cases of companies being forced to market their products in China under a different name to overcome this – although this can happen in any country and can effect your marking if that turns out to be the case.
Trademark squatters are individuals or companies who register trademarks that have been registered in other countries and hold companies to ransom. In Australia, trademarks are granted on a first-use basis. However, in other countries like China, trademarks are still granted on a first-registered basis, which means anyone can register your trademark regardless of whether they have any connection to your business. Again, if you have to rely on use of your brand to enforce your rights rather than relying on a trademark registration, you are going to be paying a lot more.
While some international safeguards, like the Madrid Protocol, already exist to protect against unethical practices like this, trademark squatting is alive and well. A current example is Australia’s Treasury Wine Estates, which is currently embroiled in a legal battle to regain the rights to use the Chinese name of its iconic Penfolds brand, Ben Fu, in China (AFR).
Ready to register? Here’s what to do next
If you’re serious about safeguarding your business, start by visiting the IP Australia website for more information on how to register a trademark. There are 45 classes in which you can register; for example, Class 1 relates to chemicals used in industry, while Class 38 refers to telecommunications services. Most businesses select the class, or classes, that most closely describes the product or service they offer.
However, this can be confusing if you are unfamiliar with the system, and you may end up either under-protecting your brand or including classes not necessary and leave your registration vulnerable to removal action.
To obtain the correct advice and eliminate a great deal of legwork and administrative pain, companies may choose to engage a Trademark Specialist such as Suzanne. In addition to managing the entire application and registration process, Pinnacle TMS offers a unique Initial Protection Review and Strategy Report, which assesses the various risks and presents options and strategies for registering your product and/or service name. Amortised over the life of a 10-year registration, the additional cost of engaging a Trademark Specialist may be less than $100 a year.
The fee for registering a single-class trademark is around $500, plus specialist’s fees if you opt for assistance with your application. However, more complex cases – where a mark is descriptive, or where there is a dispute over who owns the trademark, for example, can cost substantially more.
About Suzanne Harrington
Suzanne is a Trademark Specialist and #1 Amazon Best Selling Author. After working for over 20 years in the legal corporate world, she decided there was a niche to be filled helping small to medium sized businesses with brand protection. Suzanne is passionate about helping business owners own and protect their brands so they can avoid being sued for trademark infringement and also avoid business name or product name identity theft. With her extensive knowledge and experience, she is also educating the marketplace to be aware that, while large corporations do this as a matter of course, small to medium sized businesses also need to know they should be trademarking their brands too.