James McPhail and Mike Roth at Pause Fest 2018

You’ve poured blood, sweat and cash into your innovation or brand so it makes sense you want to protect it. Trade Mark Examiner, James McPhail recently attended the start-up event, Pause Fest 2018, to decode trade marks and shares his top tips from the workshop.

Earlier this month I attended Pause Fest, Australia’s premier creative, tech and business event for start-ups, where I presented a practical workshop to help start-ups protect their brand. I was joined by Mike Roth, Head of Legal at Afterpay who shared his insights into the well-known start-ups brand and trade mark strategy.

If you missed out, watch the full workshop video on our Facebook page! Or keep reading for my top trade mark tips.

Tip 1: choose a unique brand and consider it as an asset

Choosing a name and brand is one of the most important decisions you’ll make when starting a business. In the trade mark world, a unique brand would be something that is either not too descriptive or too similar to another brand. Think, is it something another trader would want to use without copying you? An example I like to use is an apple farmer couldn’t just call his apples ‘Apples’, but when applied to a computer company, it becomes unique.

For Afterpay, who launched in early 2015, choosing the brand and registering their first trade mark well before they went to market was important to give them confidence when launching and seeking investment. As their business grew, their trade mark as an asset became more valuable because the risk for infringement became higher.

Afterpay’s first trade mark was a word/image combination (also known as a composite mark), which can generally be easier to register and brings me onto my next tip…

Tip 2: consider the type of trade mark you need

There are a few ways you might protect your brand and common types of trade marks for a start-up or small business is usually a word, image, a combination of a word and image or a slogan.

Some other types of trade marks include a shape, colour, aspect of packaging, scent or sound. Anything that is distinctive to your business.

Now that they’ve grown, Afterpay evolved their trade mark strategy and went on to register the word mark and their slogans.

Tip 3: avoid using someone else’s brand

It’s always a good idea to do a search of existing trade marks to be confident you have chosen a brand that is not already taken or protected. You can get started using Australian Trade Mark Search and try a variation of words that could be similar to your proposed trade mark to see what already exists.

Tip 4: select the right goods or services

When you apply for a trade mark, you need to select the relevant goods or services that you intend to use your trade mark for. Here at IP Australia, we group these into 45 different classes. Handy hint: classes 1-34 are for goods and 35-45 are for services. Choose wisely, as you need to pay per class.

So, ask these questions about your business: what is it known for? How does it make money? What product or service does it provide others?

Afterpay have protected their trade mark under three classes. Class 9 for computer software, class 36 for financial services and class 42 for software as a service.

Tip 5: decide which application process is right for you

There are two options to file a trade mark: a standard application or using our TM Headstart service. What’s the difference you ask?

When you file a standard application, it will be made publicly available shortly after you file and once published, only very minor changes can be made. A TM Headstart is a pre-application service and while the fees are slightly higher, you’ll receive an assessment of your application before you officially apply. This means you can overcome potential barriers to registration with a trade mark examiner like me and make amendments.

Tip 6: don’t let the cost deter you

A common deterrent for businesses when seeking protection is the cost. But let’s break it down. Say you use the TM Headstart service and apply for a composite mark with one class. This will be $330 and protects you for ten years. That’s only $33 per year. A small price to pay for the complete protection of your businesses most valuable asset, I’d say.

So, what are you waiting for? Get started on your brand protection strategy today!

Written by James McPhail, Trade Mark Examiner


21 February 2018