What’s in a name?

What’s in a name I hear you ask.

Well thanks to Ken Thaine for stepping up and sharing with our members his experience in all things trade marks we had an (en)lightening talk today which I have attempted to capture here.

If you are thinking about going down the TM route it must meant that you value your business name. Important to note that just because you have registered your business name doesnt provide you any protection from others using that name. That is only in NSW anyway. Before you head down the track of the TM few things to consider:

  1. Google it first – you don’t want to be stepping on any big boys toes before you even get started. Or not so big guys – Ken highlighted a few local examples of businesses that had to change their name after a few years of time, effort and dollars in marketing because they were using someone else’s name that was registered and it does catch up with you eventually (e.g. Essential Ingredients in Coffs which is now Gourmond Ingredients)
  2. Search on the IP Australia website for the names you are thinking. Will indicate who is also operating in that name space and what class they are under. If there are a lot you might consider renaming before too far down the track.
  3. IP Australia won’t TM any common usage words…e.g. Ian Kinny couldn’t just TM eButton as button is too common – he had to link it to a specific logo. – Just like Apple could not register “iPad mini” as mini is used in various other uses.
  4. Think about the name of the business and if that is going to restrict you into doing certain functions. i.e. Apple Computers dropped the “computers” when they switched their focus.
  5. Benefit of getting your name registered
    • is the right to put (TM) or (R) with your business/product name.
    • credibility that you are serious about business
    • right to protect the use of that name – ie. ability to tell impersonators to desist in using it.
    • safety in knowing that in 5 years time once you have built up your brand and reputation that someone wont come knocking on your door telling you to desist (well more safe than not – but…there was the example Ken gave of Absolut surf ware company in Australia that was well established for number of years who got a notice one year when ABSOLUT vodka wanted to expand distribution into Australia, the local company was advised they had a good case to win it….but in the end not and ended up losing the business and cost $250,000 – cautionary tale)

OK now you have a name now what:

  • Try to register just the words first – you might be asked to link it to a specific logo like Ian Kinny of eButton but worth trying without first.
  • You first have to Trade Mark in Australia via IP Australia http://www.ipaustralia.gov.au 
  • once you apply you have 3 months waiting period when other people have a chance to submit an objection
  • If it is approved you then have 6 months to apply for TM in other countries at a cheap rate. If you leave it longer it will be more expensive.
  • You can apply online yourself or via a Registered Patent Attorney (there are some that do this for a “fixed price” e.g. Macintosh IP or Trademarkify – not a recommendation just an observation!) Note that as Ian Kinny experienced there was actually two steps to the fixed price stage one to run through if it was actually eligible to apply and then the actual application – something to be aware of.
  • You have to choose which class of product or service your TM fits into – which can be the tricky bit. Each class you select will cost $120
  • Benefits of getting a Patent / TM Attorney involved include:
    • it is their professional liability to select the right class for your business
    • provide advice about which classes to include
    • confidence that you are doing it right
    • ability to respond in legalese to any objections that turn up during the 3 month period

I think that captured most of the discussion. If anyone else has any thoughts and experiences to share please do!   Thanks again Ken Thaine for sharing. Who is next?

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