A good trade mark will typically be three things:
easy to recognise;
easy to protect; and
a good ambassador for the goods or services you sell.
These concepts are related - the more unique a trade mark is, the easier it will be to register.
A unique mark will also be a better ambassador for your goods and services than a generic mark as it will be more easily recognised by your customers.
Your trade mark carries the value of your brand. The more that your trade mark stands out from the crowd, the easier it is to create value, by building a reputation and goodwill in your mark.
The easier your trade mark is to register, the easier it is to protect the value you’ve created in that brand.
So with that said, here are some practical tips when making a decision about whether a trade mark is the right one for your business.
1. Do make your trade mark unique
To be recognisable and registrable, it helps if your trade mark stands out.
Although it can be somewhat difficult to come up with a trade mark which is truly unique, it really is worth putting in the time.
A unique trade mark is invaluable, particularly in the age of information and search engine optimisation (as known as SEO, ya know, the term your marketing team keeps going on about).
Ask yourself, do you really want your customers trawling through 5 pages of google results because you called your new bowling alley business “Super Bowl“…?
Your hard work in building goodwill in your brand will be diluted by the existence of other traders using similar trade marks - even if they aren’t in the same industry or market as you.
Having a unique trade mark doesn’t require you to create a new word. Many of the most recognisable trade marks simply use existing words in relation to products or services that have no connection to the ordinary meaning of the word (think Apple, Amazon or Uber).
Other unique marks can simply be unusual or unexpected combinations of words, or parts of words (think Microsoft, Netflix, YouTube, or Facebook).
As well as being important for SEO, a unique trade mark is less likely to run into problems when you try to register it.
If someone has beaten you to the punch, you might find that not only you can’t register your trade mark, by using the mark, you are infringing somebody else’s registration.
It is a good idea to check whether anyone has registered or is using the trade mark you come up with before you start using it - by searching online and by checking the trade mark register (more on this below).
2. Do make your trade mark “sticky”
Your trade mark needs to be memorable so that your customers remember the mark well enough to find it on the internet.
A memorable trade mark is often short and simple - but interesting. This applies in many, but not all industries (the pharmaceutical industry often uses trade marks which are complex and scientific sounding (like lawyers who use big words for the sake of it)).
For most businesses, it also helps if your word trade mark is easy to pronounce.
3. Do check it out
It is vital that you do some research to check whether your trade mark is already in use by another trader.
If you start using a mark and another trader is already using or has registered a mark that is the same or similar to yours, you may be at risk of infringing that trader’s mark.
That trader may be able to bring an action against you. If you apply to register a trade mark that is the same or similar to a prior registration, the prior registration may also prevent your mark from being registered.
General internet searches should be your first port of call (though, they are not always fool proof depending on your industry).
You should also search the trade mark registers of any countries that you might want to use the trade mark in.
1. Don’t directly refer to your products or services
We know it’s tempting to include a reference to the goods or services you provide in your trade mark.
How will people know what I’m selling unless I tell them through my brand?
Think of a French restaurant that calls themselves “The French Restaurant”. It is going to be pretty obvious what type of food they are selling, but imagine the logistical nightmare of telling your 5 friends where to meet you on Friday night…
You: “Let’s meet at The French Restaurant”
Friend: “Ooo I love French food. Sure thing, but which one?”
You: “The French Restaurant”
Friend: “…ok, but which one?!”
It is a bad sign if your customers can tell what goods and services you sell by your trade mark alone.
If your trade mark is not distinctive enough, you will also face problems when you try to register your trade mark.
You want a mark that can become synonymous with your business through the growth of your business and its reputation, not by describing the goods and services sold by your business.
There are degrees to this advice - calling your Brisbane bike shop, “The Brisbane Bike Shop” is not great. Calling it “Brizycles” is better. You can also get away with adding descriptive elements to a highly distinctive trade mark (“Brizcycles Bike Shop”).
Getting the balance right is tough - using a slightly descriptive mark is tempting but using a too descriptive mark can lead to issues down the track.
2. Don’t refer to a geographic location
Geographic locations are tough. It can be quite difficult to register any trade mark which contains the name of a place, even if there is no obvious connection with the goods and services you are intending to provide.
So, if you are thinking of moving to Byron Bay along with the rest of Australia at the moment and you want to start selling goods or services, try to resist the urge to include “Byron Bay” in your trade mark.
We’ve provided 8 out of 176 examples of why below:
3. Don’t “borrow”
Try and avoid using competitors as inspiration if you can.
Using marks that are the same or similar to your competitors is quite common but can lead to infringement and registration issues.
Solahart (suppliers of solar hot water systems) and Solarhut (supplier of solar panels) found themselves in the Federal Court of Australia trying to sort things out for this exact reason.
Finding inspiration from your competitor’s marks may not always be deliberate (there is a high number of solar/sola trade marks in the solar panel industry), but is something that can be avoided by identifying and avoiding trends that are being used or followed by your competitors.
4. Don’t get attached to a bad mark
You may have you heart set on calling your brand new brewery “Melbourne Brewing Co.”.
You’ve read this blog. You’ve performed some searches. And your heart sinks. “Does what they are saying apply to my trade mark…?”
And what does that mean?
You need to have an objective look at your mark. Is your connection to your trade mark causing you to not reflect on the potential downsides of the mark?
Is your trade mark a bad mark, but you just don’t want to face it?
So often businesses have their heart set on a certain mark, only to find out it is taken or when considering the practical advice above, simply a bad mark.
Yet their heart (and their wallets) are set on using or registering this mark.
Thousands of dollars later, or worse - after an infringement action is brought against them, they have to rebrand.
If after reading this article you don’t think your trade mark is up to scratch, it is better to rebrand sooner rather than later.
Other things to keep in mind...
There are a range of other factors to keep in mind. Some of the factors above will be impacted by the changing trade mark landscape and developments in case law.
Please feel free to reach out to discuss the above and any other practical issues you think may impact your mark.
We'd love to hear from you and are here to help.
And don’t you think you should use the services of people who write blog posts that are so good, you read right to the end?
PS: If you found this post helpful, then don't forget to subscribe to our newsletter where we share tips on protecting your brand and trade marks - sign up here!