News & Insights

Last week, the Macpherson Kelley IP team presented a webinar entitled “Untangling the Web of Fakes”, focussing on e-commerce, online infringement and false online reviews.  I want to revisit the content of that webinar in a series of articles, to be published over the next few weeks.

In the first segment of the webinar, I spoke with my colleague Paul Kirton about choosing the right branding for the business and then protecting that branding.

Distinctiveness

Broadly speaking, branding runs on a spectrum from distinctive to descriptive.  Think of “Apple”.  It has nothing to do with phones or computers.  It is a distinctive trade mark when used in relation to those types of goods.  A made up word is also generally distinctive.  On the other hand, a name following the “geographic location + type of business” template is wholly descriptive.

Distinctive trade marks are much easier to protect than descriptive ones.  Descriptive names often become lost among competitors using similar or identical descriptive terms.  They might work for bricks & mortar retail.  For example “[Suburb name] Fish & Chips”.  But for online businesses, they’re generally terrible.

Apart from the practicality of standing out from the crowd, protecting the brand through registration as a trade mark is much easier for a distinctive trade mark.  This is because other traders may have a legitimate need to use descriptive brands for their own business.  Maybe there are two fish & chip shops in the same suburb.  The law leaves that open by not allowing one person to monopolise such trade marks, unless they can demonstrate that through use, they have acquired a sufficient reputation in the trade mark.  But that may take years to achieve, if at all.

Availability

Assuming that you have developed a great distinctive brand for your business, the second issue is the availability of that brand for use.  Does somebody else already have a trade mark registration for a substantially identical or deceptively similar trade mark, in relation to similar goods or services?  Or in relation to goods that are closely related to the services that you wish to provide?

If there is a conflicting registration,  it can not only block your attempt to register your new brand, but it also places you at risk of infringing the existing trade mark.  It’s not a great way to celebrate your business launch when you receive a “cease and desist” letter before the balloons from the launch party have even deflated.

Infringement risks can also come from the reputational rights of others.  If somebody in that industry uses similar branding, then your branding may be misleading or deceptive, or a common law passing off.

Finally, Australia has a “first to use or file” trade mark system.  It means that if they have used but not yet registered a substantially identical trade mark in relation to those same goods or services, they may be able to use those rights to defeat your trade mark application.  They could also potentially register their trade mark and sue you for infringement.  Even if they have little reputation in their trade mark

This makes comprehensive prior trade mark vetting searches particularly important in Australia.  Those searches need to cover both registered and unregistered trade marks in order to be meaningful.

Registration

Once you have chosen your branding, you should register it as a trade mark.  Trade mark registration is a country-by-country process (with some regional exceptions such as a European Union trade mark).

This maximises the protectability of the trade mark, because you are not reliant on demonstrating acquired reputation in your branding.  That protection is Australia-wide, lasts for 10 years and thereafter can be easily renewed in 10 year increments.

Online considerations

Online businesses generally rely on their online identifiers.  Is a workable domain name available?  Does a competing or similar business use a similar domain name that could lead to confusion?  What about if somebody types in a common misspelling of your domain name?  Are they likely to continue searching for you or stay on the site where they have landed?

If you’re going to be active on social media, what about the right Instagram account name or Twitter handle?  This brings up an important international issue.  While your .au trade mark and domain name may be available in Australia, your social media services are global.  Your desired name may be held by a similar business elsewhere.

Ideally, you’ll want to register your domain name and any obvious misspellings or abbreviations.  They can be redirected to your main site, but will reduce the risk of somebody else using them for a misleading purpose (eg to send phishing emails).

Take-aways

So the take-aways from the first part of our webinar were:

1. Choose a distinctive brand.
2. Ensure that the brand is available.
3. Register the brand as a trade mark.
4. Don’t forget about online identifiers such as domain or social media account names.

Look out for the next article in this series soon and contact a member of our Intellectual Property team if you have any queries.