A lot of time, effort and money goes into branding a business – coming up with the name, designing a logo, generating marketing material, etc.
Most people will do the usual business, company and domain name searches, and if the name is available, they register. This is certainly a start, but this isn’t where these enquiries should end.
Why isn’t a business/company/domain search sufficient?
These simple search functions tell you whether the exact name you’ve punched in is already taken. They don’t tell you whether you’re potentially infringing on an existing trademark.
So, why is this a problem?
A practical example is REA Group Ltd v Real Estate 1 Ltd.
REA Group Ltd is the registered owner of ‘realestate.com.au’ and ‘realcommercial.com.au’ trade marks. Real Estate 1 attempted to register the trade marks ‘realestate1.com.au’ and ‘realcommercial1.com.au’.
The Court found that there would be a real danger of confusion between REA’s trade marks, and the trade marks Real Estate 1 sought to register, as they were deceptively similar and had the capacity to confuse a potential consumer. This constituted trade mark infringement and the registration application was refused.
And if you need more convincing, here are some other reasons to trademark:
- Protecting your brand – because in the example above, you want to be REA Group Ltd who has a valuable monopoly.
- Money! Any prudent buyer or investor wants to know that their potential investment owns its own name and its trademark is protected. Trademarking adds value to your business.
What next?
From beginning to end, an unopposed trademark application takes at least 6 months.
We find for many start-ups, trademarking simply isn’t in the budget. This shouldn’t stop you from getting some initial legal advice around your brand, and working out a plan with your legal advisor to start protecting it as soon as funds permit.
For existing businesses, if you are thinking of selling your business or approaching investors, be mindful that trademarking your brand doesn’t happen overnight.
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