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Most of us are somewhat familiar with trademarks, if not in name then at least in practice. The famous Nike swoosh, the Golden Arches of McDonald’s and the iconic Google logo - all these are registered trademarks.
Instantly recognisable and synonymous with their goods and services, these trademarks are not only a valuable marketing tool but a powerful protective measure. In this guide, we’ll delve into what trademarks are, the benefits of a trademark, types of trademarks and more.
By the end, you’ll better understand the value of a trademark and how to protect your business. So let’s get started.
A trademark is a form of intellectual property that a business uses to distinguish itself or its products from its competitors. A registered trademark has been formally registered with and ownership claimed by an individual, business, organisation or other legal entity. Trademarks come in many forms and can be a sign, logos, images, sounds, scents, phrases and more.
Trademarks are used in business to stop competitors from using the same or a similar mark in the same or a similar field of business. Infringement of a trademark occurs when another entity tries to sell its goods or services under the same or a similar trademark to the registered trademark, hoping to gain financially off the reputation of the trademark owner, by causing deception or confusion in the minds of their customers.
Trademarking is incredibly beneficial to a business. It offers you as the owner the exclusive rights to use the trademark and gives you legal rights to take action against anyone who uses it without permission. Not even the registration of a business name or domain name offers the same level of protection as a trademark is the only way to register ownership of a brand.
Your brand and its reputation are intrinsically linked to the success of your operations. You work hard to build that reputation in your business by providing good service, good quality products, good availability of your products, etc. Ensuring your chosen trademark is protected helps to deter third parties from masquerading themselves or their products as part of your business.
It also:
When you file a trademark application you are required to specify the goods and/or services you want to protect. The goods and services are broken down into 45 individual classes, relating to particular fields of business. The trademark being applied for is not allowed to be descriptive of the goods or services that they are intended to be used on - this is so that your competitors can still describe the goods or services that they are offering. Your trademark is also not allowed to be laudatory (i.e. using words like "great", "wonderful", "beautiful", "excellent") as this would limit your competitors in advertising their goods.
When a trademark application is filed, it gets examined for two main things:
If it is not inherently capable of distinguishing, or is too close to an existing registered mark, an objection will be raised by the trademarks examiner.
In Australia, you are not required to register a trademark but you may not always be able to use your chosen logo, design, phrase or similar as you see fit. There is some level of protection available under the law for those who choose not to register a trademark, however, it is still a risk.
Another entity could choose to register your trademark out from under you and you will have limited recourse to stop them. This means someone else can easily undermine you and profit from your hard work and reputation. It is always recommended to register a trademark and it is never too late - whether you have been in business for 10 days or 10 years, you can pursue registration.
Registering your trademark provides proof of ownership and is the best way to ensure you can continue to use your chosen brand.
Trademarks that are used in business can have different levels of distinctiveness. There are broadly five different levels of distinctiveness.
First up, let’s look at the different levels of distinctiveness of trademarks.
Made up trademarks are words that are made up, such as "Kodak", "Reddit", or "Zumba". They did not exist as words previously. These are ideal for trademark registration as they should be inherently capable of distinguishing your goods or services from your competitors, and you would be really unlucky if someone else made up the same trademark as you and filed it in the same or a similar class.
Suggestive trademarks are suggestive of the qualities of the goods or services, but are not descriptive of the goods or services themselves. Examples of suggestive marks include "Greyhound" for bus services (suggesting speed or sleekness), "Iron Mountain" for data storage (suggesting immovability, security, or impenetrability), or The North Face for bags and outdoor clothing (suggesting ruggedness, or the challenge of a mountain climb). None of these actually describe the products. They are inherently capable of distinguishing and should be registrable if there isn't an existing mark on the register that presents a problem.
Arbitrary trademarks are when an existing design or word is used out of context in order to represent a service, item or brand.
An example of an arbitrary trademark would be the word "Apple" for computers or phones, or "Anchor" for milk, or "Cobra" for floor polish. None of these is descriptive of the goods or services themselves, and are inherently capable of distinguishing. These should be registrable if there isn't an existing mark on the register that presents a problem.
Semi descriptive trademarks are trademarks that use descriptive or laudatory words or adaptations of them. An example may be "Trailock" for a trailer locking product. They may be registrable as a trademark, (often after a lot of costly arguing with the trademarks examiner), but commercially they are not helping as every time your competitor uses the words trailer and lock together, it will dilute your semi-descriptive trademark.
Used to directly describe goods and services, descriptive trademarks are quite uncommon and can be difficult to register. An example may be "Medical Imaging Services" for medical imaging services, or "milk" for milk, or a phrase such as ‘smooth and chocolatey’ for a hot chocolate product. This is due to a description being too broad and its ability to unfairly quash competition. The rule of thumb is that if your competitors could be reasonably required to use it in the ordinary course of trade, then it should not be protectable as a trademark.
There is also a potential commercial problem in that your customers may not be building any brand recognition in your trademark if they don't even understand that the trademark is a brand, and instead think you are just describing your goods or services.
When a trademark is applied for and the filing approved, it is linked to specific goods and/or services. Trademark classes help to define where and how you can use your trademark while making it easier for you to defend yourself from infringement from those in the same industry.
To determine or request what your trademark is to be aligned with under these classes, you’ll need to review these via IP Australia. There is much that goes into the specifics of each glass, but to give you an idea of how diverse they are, we’ve prepared a basic outline below.
Classes 1-34 cover Goods including but not limited to:
Classes 35-45 cover Services including but not limited to:
Do you feel overwhelmed looking at this list? You’re not alone - and this is by no means an exhaustive rundown of the 45 classes. It is easy to feel bogged down in the details and have no idea where to begin classifying your trademark.
The reality is if you do not properly request or assign all appropriate classes of goods and services to your trademark, you will not be adequately protected. Additionally, if your application is incorrect in its selection of classes, your trademark request may be rejected. Further, if you apply in the incorrect class you may find that your trademark cannot be enforced if you need it.
If you’re ready to pursue a trademark application for your business, IP Guardian can support you to simplify and streamline the process. As highly qualified patent and trademark attorneys, we have decades of experience in securing successful trademark registrations.
We handle every step from checking for existing similar trademarks, to classification, documentation and submission with ease.
Avoid the time, hassle and overwhelm of pursuing your trademark application online and speak with our team about a cost-effective solution handled by experienced attorneys. Book your obligation-free consultation today on 02 9071 0130.
Registered Patent and Trade Mark Attorney with significant experience obtaining all forms of registered intellectual property. I hold a Bachelor of Science in Engineering, a Masters of Business Administration and a Masters of Intellectual Property. I’m passionate about showing my clients how they can protect their brands through trademark registrations.
I found them online and initially I was bit hesitant to talk to them about my problem but when I spoke to Barry, I felt more comfortable, and he gave me all the information and advice I wanted without even thinking that I am going to give him business or not. Finally, I went with them, and they made the entire process so smooth and easy for me. john was keeping us updated with each step he was doing. I would recommend these guys for any patent or trademark related service.
I would like to express my thanks to Barry and his team at IP Guardian in Sydney for their assistance with our recent Trademark application. Barry was highly professional, readily available throughout the process and clearly communicated expectations. Barry even helped us refine our application so that we had a greater chance of success which was very much appreciated to avoid extra costs. I would highly recommend Ip Guardian for all your Trademark and Intellectual Property needs.
Barry, last week, you and your professional team, made my year (or probably my next 21 years). So thank you so much for your executive, calm yet very effective actions under extream pressure. Elias Hajjar, Director, TROLLEYON PTY LTD
Informative, understood the business, what it needed and answered questions in a friendly and approachable manner. Easy decision to continue working with IPGuardian for future trademarking
From the day I contacted Barry Meskin until now with my silly amateur questions, he has been nothing short of amazing. I actually NEVER leave reviews anywhere, but I felt the need to do so for Barry and his team. I myself am a tradie, so I felt intimidated speaking to an attorney. But the second I spoke to him on the phone, he made me feel right at home. Never pressured me into any decisions, yet when I decided to go ahead with him, he delivered what I needed much quicker than what I was expecting. I cannot speak highly enough of him and recommend his services 100%.
The team at IP Guardian have made the process extremely straight forward and easy for us to understand exactly what was required. I will highly recommend to our clients who need help with IP.
I have dealt with Barry over the years, his advice and experience has helped me greatly. Looking for to working with him and his team again. Maher.
IP Guardian helps protect words, symbols, letters, numbers, names, signatures, phrases, sounds, shapes and smells. Yes, I said smells.
We've had the pleasure to work closely with Barry for many years. He has been exceptional to deal with and has a keen focus in providing a commercial led IP "go to market" strategy for start-ups and well known brands. Makes it easy and always advises on different ways to navigate through the IP process.
Barry Meskin @ IP Guardian is an experienced and extremely knowledgeable expert in the domain of intellectual property, patents and trademarks. In addition he has been extremely responsive and very professional in all our dealings. I wholeheartedly recommend Barry's services to any business or anyone seeking advice in this area - great quality and great value.