In our first guest blog, brand expert Christine Moody discusses how to protect your brand identity and important steps to consider before lodging a trade mark application.

What’s in a brand name?

Brand identity is fast becoming one of the most valuable assets for a business. Contemporary asset value (for intangible assets such as brands) is now nearly 85 per cent of the market value of Standard & Poor’s 500 Index companies, according to an annual survey by Ocean Tomo in 2015. Yet protection of brand identity is often overlooked until it’s too late.

While ‘brand’ is most often associated with logos, it actually encompasses much more. Brand and brand name is integral to how an organisation engages with its customers and market and in many cases is its most recognisable asset. This is particularly the case for businesses that have little in the way of physical infrastructure or locations. The best way to protect your brand identity is with a trade mark.

Protecting your brand identity

When businesses commence trading, business name and domain name registrations are often in place but trade mark registration isn’t considered important or even known about. Many business owners think that they will ‘get around to it later down the track’. This may not be an issue until the business is sold ‘or takes on new partners and investors and during the due diligence process, someone asks ‘who owns the trade mark and is it registered?’.

There is a lot of confusion about the differences between a business name (via ASIC), a website domain name, and trade marks. Business, domain names, and trade marks serve different purposes in the market place. Business or domain name registration does not provide an exclusive right to a name and will not protect your brand name or identity. Trade marks are intellectual property that add value to your business and need to be managed accordingly. Trade marks can only be registered through IP Australia.

Trade mark registration

According to IP Australia, each year individuals and businesses lodge more than 73 000 (2015/16) trade mark applications. Often these applications are not accepted because they don’t meet the requirements of the Trade Marks Act including issues such as being similar to trade marks already registered.

To give your brand identity the best chance of registration, there are four important stages prior to lodging your trade mark application:

  1. gain an understanding of the strategic plan of the business and the industry sector as well as current and future plans—new products and services
  2. complete an initial search of similar brand identities in the same sector to ensure there is nothing similar—the point here is to create a unique and distinctive identity to protect your commercial space in the market and enable you to differentiate your organisation from your competitors
  3. it’s important not to fall in love with the first idea and keep an open mind as the brand name and the brand identity need to be timeless and adaptable to your future business direction
  4. brand name is a strategic decision and consideration must be given to its translation across all customer ‘touch points’—from website to bricks-and-mortar stores.

Once you have developed your brand strategy you can test the waters to see if your proposed trade mark will have any impediments to being accepted. IP Australia offers a quick, confidential and cost effective check of whether a proposed trade mark will come up against any issues when filed. Check out the Headstart service for more information.

How do you maintain brand protection?

Successful trade mark registration isn’t enough for long-term brand protection. Pro-active review of the Trade Marks Register and marketplace to prevent infringement of your registered trade mark or your trade mark being used generically are critical. You should:

  • conduct regular brand audits: formal registration means easier and more effective protection of your competitive market but your organisation must use the trade mark in its registered format.
  • get educated on the importance of asset protection and your role in ensuring the proper use of the trade mark
  • conduct quarterly reviews of existing and new products and services to ensure ongoing protection and new applications are lodged in a timely manner: as new products and services come online, the process of protection should be repeated.

Written by guest blogger Christine Moody
BA GradDip(Comn)(Dist) MDes (Research)
GradCertAppLaw (Current)
Academic Sessional QUT Business School
Brand Experience Expert for Brand Audits

Disclaimer: Guest blog content is provided to encourage positive conversation around a broad range of intellectual property topics. The views expressed do not necessarily reflect the views and policies of IP Australia. We accept no responsibility for the accuracy or completeness of the views or information posted and we disclaim all liability from those views that may be occasioned directly or indirectly through the use of, or reliance, on those views and information.

28 June 2017